The Trade Marks Act, 2023

Trade Marks [No. 11 of 2023 181
THE TRADE MARKS ACT, 2023
ARRANGEMENT OF SECTIONS
PART I
PRELIMINARY PROVISIONS
Section
1. Short title and commencement
2. Interpretation
3. Application and administration of Act
PART II
APPLICATION FOR REGISTRATION OF TRADE MARKS
4. Application for registration of trade mark
5. Joint application
6. Series application
7. Period for completion of application for registration
8. Commencement of applicant’s rights
9. Classification of good or service
10. Single application for multiple classes
11. Division of application
12. Filing date of application
13. Priority of application for registration of identical or similar trade mark
14. Priority claim
15. Formality examination of application
16. Substantive examination of application
17. Publication of acceptance of application
18. Withdrawal of application, or restriction of goods or services covered by
application for registration of trade mark
19. Opposition to registration of trade mark
20. Grounds of opposition
21. Counter statement to notice of opposition
22. Evidence in reply of application for registration of trade mark
23. Hearing
24.

rounds of opposition
21. Counter statement to notice of opposition
22. Evidence in reply of application for registration of trade mark
23. Hearing
24.

Dismissal of notice of opposition
Single copies of this Act may be obtained from the Government Printer,
P.O. Box 30136, 10101 Lusaka, Price K114.00 each.

issal of notice of opposition
Single copies of this Act may be obtained from the Government Printer,
P.O. Box 30136, 10101 Lusaka, Price K114.00 each.

182 No. 11 of 2023 Trade Marks
PART III
REGISTRATION OF TRADE MARKS
25. Registration of trade mark
26. Date of registration
27. Disclaimer of part of trade mark
28. Disclaimer on grounds of public interest
29. Registration of separate trade marks
30. Registration of series of trade marks
31. Registration of trade mark as associated trade mark
32. Non-registrable words
33. Trade mark containing name of known person
34. Honest concurrent use
35. Registration of trade mark containing representation of national symbol
36. Registration of trade mark containing flag, armorial bearings or official
signs of Convention country
37. Registration of trade mark containing armorial bearings, flag, or other
symbol of international organisation
38. Emblems, official signs or hallmarks protected under the Paris Convention
or TRIPS Agreement
39. Limitation of trade mark to particular colours
40. Prohibition of registration of names of chemical elements or
International Non-Proprietary Names
41. Absolute grounds for refusal to register mark as trade mark
42. Relative grounds for refusal of registration
43. Validity of registration of trade mark
44.

ute grounds for refusal to register mark as trade mark
42. Relative grounds for refusal of registration
43. Validity of registration of trade mark
44.

Renewal of registration of trade mark and notice of expiry
45. Variation of registration
46. Alteration of registered trade mark
47. Cancellation of registered trade mark
48. Removal of trade mark from Register
49. Acquiescence in use of trade mark
PART IV
RIGHTS OF PROPRIETOR
50. Rights conferred by registration of trade mark
51. Protection of well-known trade mark
52. Rights of proprietor in infringement proceedings
53. Protection of vested rights
54. Use of trade mark as description of article, substance or service
55. Registered trade mark as property
56. Transfer of trade mark
57. Restriction on transfer of trade mark
58. Transfer or transmission of associated trade marks

red trade mark as property
56. Transfer of trade mark
57. Restriction on transfer of trade mark
58. Transfer or transmission of associated trade marks

Trade Marks [No. 11 of 2023 183
PART V
PERMITTED USE AND LICENSEE
59. Permitted use
60. Registration of licensee
61. Variation of registration of licensee
62. Cancellation of registration of licensee
63. Prohibition of transfer or transmission of trade mark
PART VI
INFRINGEMENT OF REGISTERED TRADE MARK
64. Infringement of registered trade mark
65. Infringing acts
66. Exemptions to infringement
67. Exceptions in relation to advertising
68. Exhaustion of rights
69. Commencement of infringement proceedings
70. Request by licensee for commencement of infringement proceedings
71. Groundless threats of infringement proceedings
72. Remedies for infringement
73. Order for delivery up
74. Order for disposal
75. Provisional measures
PART VII
COLLECTIVE MARKS
76. Application of Act to collective marks
77. Application for registration of collective mark
78. Inspection of rules for collective mark
79. Amendment of rules for collective mark
80. Non-transfer or transmission of collective mark
81. Grounds for revocation of registration of collective mark
82. Infringement proceedings
PART VIII
CERTIFICATION MARKS
83. Application of Act to certification marks
84.

cation of registration of collective mark
82. Infringement proceedings
PART VIII
CERTIFICATION MARKS
83. Application of Act to certification marks
84.

Application for registration of certification mark
85. Inspection of rules for certification mark
86. Amendment of rules for certification mark
87. Restriction on application for certification
88. Registrar’s consent to transfer certification mark
89. Authorised use of certification mark
90. Rights of authorised user in relation to infringement of certification mark

o transfer certification mark
89. Authorised use of certification mark
90. Rights of authorised user in relation to infringement of certification mark

91. Acts not constituting infringement of certification mark
92. Cancellation of registration of certification mark
93. Variation of rules governing certification mark
94. Infringement proceedings of certification mark
PART IX
GEOGRAPHICAL INDICATIONS
95. Protection of registered geographical indication
96. Geographical indication excluded from protection
97. Application for registration of geographical indication
98. Homonymous geographical indication for wines
99. Examination of application and publication of acceptance of geographical
indication
100. Opposition to registration
101. Registration of geographical indication
102. Right to use
103. Validity and renewal of registered geographical indication
104. Unlawful use of geographical indication
105. Seizure in case of unlawful marking with geographical indication
106. Transfer of registered geographical indication
107. Exemptions regarding prior and other users
108. Cancellation of registration of geographical indication
PART X
BORDER MEASURES
109. Notice for border measures
110. Notice of seizure
111. Inspection and release of seized goods
112. Forfeiture of seized goods by consent
113.

RES
109. Notice for border measures
110. Notice of seizure
111. Inspection and release of seized goods
112. Forfeiture of seized goods by consent
113.

Release of seized good and compensation to importer
PART XI
TRADE MARK AGENTS
114. Holding out as trade mark agent
115. Prohibition of establishment of business without registration
116. Registration as trade mark agent
117. Renewal of trade mark agent’s certificate
118. Functions of trade mark agent
119. Register of trade mark agents
184 No. 11 of 2023 Trade Marks

nt
117. Renewal of trade mark agent’s certificate
118. Functions of trade mark agent
119. Register of trade mark agents
184 No. 11 of 2023 Trade Marks

120. Cancellation of trade mark agent’s certificate
121. Restoration of trade mark agent’s certificate
PART XII
OFFENCES
122. Counterfeiting trade mark
123. Falsely applying a registered trade mark to good or service
124. Making or possessing of infringing article
125. Importing or selling goods with falsely applied trade mark
126. Unauthorised reproduction of registered trade mark
127. Falsification of entries in Register
128. Altering of documents
129. Deceiving Registrar or officer with false statement
130. False representation about Agency
131. General offences
132. Arrests and Inspections
PART XIII
GENERAL PROVISIONS
133. Register of trade marks and geographical indications
134. Evidence of certain entries and documents
135. Rectification of Register
136. Amendment of Register for adaptation of classification
137. Intellectual Property Journal
138. Correction of error in document
139. Service of documents by Registrar
140. Filing and service of documents on Registrar
141. Preliminary advice and search
142. Request for information
143. Powers of Registrar in proceedings
144. Registrar not bound by rules of evidence
145.

Preliminary advice and search
142. Request for information
143. Powers of Registrar in proceedings
144. Registrar not bound by rules of evidence
145.

Power of Registrar to determine time and place of sitting
146. Extension of time
147. Appeal against decision of Registrar
Trade Marks [No. 11 of 2023 185

148. Registrar to act as soon as practicable
149. Duplicate certificate
150. Forfeiture and confiscation orders
151. Administrative penalty
152. General penalty
153. Offence by principal officer, shareholder or partner or body corporate or
unincorporate body
154. Regulations to give effect to Madrid Protocol
155. Regulations
156. Repeal of Cap. 401 and savings and transitional provisions
SCHEDULE
186 No. 11 of 2023 Trade Marks

ive effect to Madrid Protocol
155. Regulations
156. Repeal of Cap. 401 and savings and transitional provisions
SCHEDULE
186 No. 11 of 2023 Trade Marks

Short title and
commencement
An Act to provide for the registration and protection of trade
marks and geographical indications; provide for the rights
conferred by the registration of trade marks and
geographical indications; provide for the effects of
registration of trade marks and geographical indications;
provide for civil and criminal enforcement for infringement
of registered trade marks and geographical indications;
domesticate the Madrid Protocol relating to the
International Registration of Marks, the Paris Convention
for the Protection of Industrial Property and the World
Trade Organisation Agreement on Trade-Related Aspects
of Intellectual Property Rights, and any other relevant
international treaty or convention to which the Republic
is a State Party; repeal and replace the Trade Marks Act,
1958; and provide for matters connected with, or incidental
to, the foregoing. [26th December, 2023
ENACTED by the Parliament of Zambia. PART I
PRELIMINARY PROVISIONS
1. This Act may be cited as the Trade Marks Act, 2023, and
shall come into operation on the date appointed by the Minister by
statutory instrument. 2.

1. This Act may be cited as the Trade Marks Act, 2023, and
shall come into operation on the date appointed by the Minister by
statutory instrument. 2.

In this Act, unless the context otherwise requires—
“Agency” means the Patents and Companies
Registration Agency continued under the Patents
and Companies Registration Agency Act, 2020;
“applicant” means a person who makes an application
under this Act;
Act No.4 of
2020
Interpretation
GOVERNMENT OF ZAMBIA
ACT
No. 11 of 2023
Date of Assent: 22nd December, 2023
Enactment
Trade Marks [No. 11 of 2023 187

Act No.4 of
2020
Interpretation
GOVERNMENT OF ZAMBIA
ACT
No. 11 of 2023
Date of Assent: 22nd December, 2023
Enactment
Trade Marks [No. 11 of 2023 187

“assignee” means a person who derives title to a
registered trade mark or geographical indication
from a proprietor;
“assignment” means a transfer of rights and liabilities
of a party in a registered trade mark or
geographical indication made in accordance with
this Act;
“associated trade mark” means a trade mark that is
required to be registered as an associated trade
mark in accordance with this Act;
“authorised officer” means an officer authorised by
the Commissioner-General in accordance with the
Customs and Excise Act;
“authorised user” means a person authorised to use
a certification mark;
“certification mark” means a trade mark on a good
or a service that indicates that, the use of that good
or service is certified by a proprietor in respect of
origin, material, mode of manufacture of a good or
the performance of a service, quality, accuracy or
other characteristics;
“collective association” means a body of persons,
whether incorporated or not, that has, or is able to
have, members and is established for the joint
benefit of the members who can be ascertained;
“collective mark” means a trade mark used, or
intended to be used, in relation to a good or service
provided, in the course of trade, by members of a
collective association to distinguish the good or
service from a good or service provided by persons
who are not members of the collective association;
“Commissioner-General” means the person appointed
as Commissioner-General in accordance with the
Zambia Revenue Authority Act;
“competent authority” means a local authority, an
agency, a department, ministry or person that has
authority to perform a designated function;
“Convention country” means a country that is a State
Party to the Paris Convention;
“counterfeit trade mark good” means a good which
bears, without authorisation, a trade mark that is
Cap.

hat is a State
Party to the Paris Convention;
“counterfeit trade mark good” means a good which
bears, without authorisation, a trade mark that is
Cap.

322
Cap. 321
188 No. 11 of 2023 Trade Marks

322
Cap. 321
188 No. 11 of 2023 Trade Marks

identical or similar to the trade mark that is
registered under this Act;
“Court”means the High Court established under the
Constitution;
“geographical indication” means—
(a) the name of, or a reference to, a
geographical area that indicates the
specific geographical origin of a good
where the quality, reputation or other
characteristic of that good is essentially
attributable to a geographical area where
that good is produced, processed or
prepared for sale; or
(b) a word, phrase or symbol that has become
essentially attributable to a geographical
area where the good is produced,
processed or prepared for sale as a result
of long term and consistent use of that
word, phrase or symbol;
“good in transit” means a good imported, whether or
not landed or transhipped within the Republic, and
intended to be carried to another country either by
the same or another conveyance;
“infringing article” in relation to a registered trade
mark means an article that—
(a) is specifically designed or adapted for
making a copy of a mark identical with or
similar to a registered trade mark; or
(b) a person has in that person’s possession,
custody or control, knowing or having
reason to believe that the article has been
or is intended to be used to produce an
infringing good or material;
“infringing good” in relation to a registered trade mark
means a good, or the packaging of a good, which
bears a mark that is identical with, or similar to, a
registered trade mark and the—
(a) application of the mark to a good or its
packaging is an infringement of the
registered trade mark; or
Cap.

r to, a
registered trade mark and the—
(a) application of the mark to a good or its
packaging is an infringement of the
registered trade mark; or
Cap.

1
Trade Marks [No. 11 of 2023 189

1
Trade Marks [No. 11 of 2023 189

(b) mark has been used in relation to a good,
or its packaging, in a way that infringes a
registered trade mark;
“infringing material” in relation to a registered trade
mark means a material which bears a mark
identical with, or similar to, a registered trade mark
and the material is—
(a) used for labelling or packaging a good, as
a business paper, or for advertising a good
or service, in a manner that infringes the
registered trade mark; or
(b) intended to be used in a manner that would
infringe the registered trade mark;
“Intellectual Property Journal” means a journal
published by the Agency periodically for purposes
of advertising intellectual property applications and
other matters required to be published for the
purposes of this Act;
“International Bureau” means the International
Bureau of the World Intellectual Property
Organisation;
“International Non-Proprietary Name” means a name
used and recommended by the World Health
Organisation to identify a pharmaceutical
substance of an active pharmaceutical ingredient;
“international registration” means the registration of
a mark effected under the Madrid Protocol;
“legal practitioner” has the meaning assigned to the
word “practitioner” in the Legal Practitioners Act;
“legal representative” means a—
(a) liquidator of a company appointed in
accordance with the Corporate Insolvency
Act, 2017;
(b) receiver for a company or other person
appointed in accordance with the
Corporate Insolvency Act, 2017;
(c) person appointed under a power of
attorney;
Cap.

er for a company or other person
appointed in accordance with the
Corporate Insolvency Act, 2017;
(c) person appointed under a power of
attorney;
Cap.

30
Act No. 9 of
2017
Act No. 9 of
2017
190 No. 11 of 2023 Trade Marks

30
Act No. 9 of
2017
Act No. 9 of
2017
190 No. 11 of 2023 Trade Marks

(d) person recognised by law, representing a
deceased or bankrupt person; or
(e) person recognised by law, representing a
child or a legally disqualified person;
“legally disqualified” means the absence of legal
capacity as provided under section 4 of the Mental
Health Act, 2019;
“licence agreement” means an agreement entered
into between a proprietor and a person with
permitted use of a registered trade mark which
contains—
(a) particulars of the extent of control by the
proprietor over the permitted use of the
trade mark;
(b) details as to whether the licence shall be
exclusive or non exclusive;
(c) proposed conditions or restrictions with
respect to the characteristic of the good
or service, the mode or place of permitted
use or other matter; and
(d) the duration of the permitted use of the
registered trade mark;
“licensee” means a person who is registered as a
licensee in accordance with section 60;
“limitation” means a restriction to the exclusive right
to use a registered trade mark or geographical
indication, including a limitation of a right to the
mode of use, use of a good to be sold or otherwise
traded in, a service to be performed within the
Republic or a good to be exported to any market
outside the Republic;
“Madrid Protocol” means the Protocol relating to
the Madrid Agreement concerning the international
Registration of Marks adopted at Madrid on 27th
June, 1989, and acceded to by Zambia on 15th
August, 2001;
“mark” includes a device, brand, heading, label, ticket,
name, signature, smell, sound, word, letter, numeral,
shape of a good , packaging or combination of
colours or any combination thereof;
Act No.6 of
2019
Trade Marks [No.

ell, sound, word, letter, numeral,
shape of a good , packaging or combination of
colours or any combination thereof;
Act No.6 of
2019
Trade Marks [No.

11 of 2023 191

11 of 2023 191

“national symbol” means a national symbol specified
in the Constitution;
“Paris Convention” means the Convention for the
Protection of Industrial Property adopted in Paris
on 20th March, 1883, and acceded to by Zambia
on 14th February, 1977;
“permitted use” means the use of a registered trade
mark with the consent of a proprietor as specified
under section 59;
“person” has the meaning assigned to the word in
the Constitution;
“producer” means a person who—
(a) produces an agricultural product;
(b) exploits a natural product; or
(c) manufactures a product of handicraft or
industry;
“proprietor” means, in relation to a—
(a) registered trade mark, the person whose
name appears in the Register as proprietor;
(b) registered collective mark, the collective
association whose name appears in the
Register as proprietor;
(c) registered certification mark, the person
whose name appears in the Register as
being responsible for certifying a good or
service to which the certification mark
relates;
(d) well known mark, a person entitled to
protection under Article 6bis of the Paris
Convention or Article 16 of the TRIPS
Agreement; or
(e) registered geographical indication, a
producer who is in an area where a
certificate of registration has been issued
for that geographical indication;
“Register” means the Register of trade marks and
geographical indication established and maintained
in accordance with section 133;
Cap.1
Cap.1
192 No.

Register” means the Register of trade marks and
geographical indication established and maintained
in accordance with section 133;
Cap.1
Cap.1
192 No.

11 of 2023 Trade Marks

11 of 2023 Trade Marks

“register of trade mark agents” means a register
established and maintained under section 119;
“registered”, in relation to a trade mark or
geographical indication, means registered under
this Act;
“registered trade mark” means a trade mark that—
(a) has been entered in the Register;
(b) has a certificate of registration issued; and
(c) is valid;
“Registrar” means the person appointed as Registrar
under the Patents and Companies Registration
Agency Act, 2020;
“repealed Act” means the Trade Marks Act, 1958;
“respondent” means a person against whom
infringement proceedngs have been commenced
under this Act;
“series of trade marks” means trade marks that
resemble each other and differ on matters of non-
distinctive character which do not substantially
affect the identity of the trade marks;
“successor in title” means a person who derives title
to a registered trade mark or geographical
indication from a proprietor;
“trade mark” means a mark—
(a) capable of being represented in the
register in a manner that determines the
clear and precise subject matter of
protection; and
(b) that distinguishes a good or service—
(i) of one person from an identical or
similar good or service of another
person; or
(ii) certified by a proprietor from an
identical or similar good or service
that has not been certified by that
proprietor;
Act No.4 of
2020
Cap.401
Trade Marks [No.

by a proprietor from an
identical or similar good or service
that has not been certified by that
proprietor;
Act No.4 of
2020
Cap.401
Trade Marks [No.

11 of 2023 193

11 of 2023 193

“trade mark agent” means a person registered as a
trade mark agent under section 116;
“trade name” means a name or designation identifying
and distinguishing an enterprise;
“transmission” means a transfer by operation of the
law, devolution on the personal representative of a
deceased person, or any other mode not being an
assignment;
“TRIPS Agreement” means the Agreement on Trade
Related Aspects of Intellectual Property Rights
set out in annex 1C of the Marrakesh Agreement
establishing the World Trade Organisation that
entered into force on 1st January, 1995, and was
acceded to by Zambia on 10th August, 2009; and
“well-known trade mark” means a trade mark that is
well known in the Republic as being the trade mark
of a person who is a national of a Convention
country or domiciled in, or has a real and effective
industrial or commercial establishment in the
Convention country, whether or not the person
carries on business in the Republic. 3. (1) This Act applies to a registered trade mark, geographical
indication and a well-known trade mark. (2) This Act shall be administered by the Agency. PART II
APPLICATION FOR REGISTRATION OF TRADE MARKS
4.

hical
indication and a well-known trade mark. (2) This Act shall be administered by the Agency. PART II
APPLICATION FOR REGISTRATION OF TRADE MARKS
4.

(1) Subject to subsection (2), a person who intends to register
a trade mark in respect of a good or service shall apply to the
Registrar in the prescribed manner and form on payment of the
prescribed fee. (2) A person is eligile to make an application under subsection
(1), if that person—
(a) claims to be the owner of the trade mark; or
(b) is using or intends to use a trade mark in relation to the
good or service referred to in subsection (1). (3) A person may make a single application under subsection
(1), for the registration of a trade mark for different classes of a
good or service and the prescribed fee shall be payable in respect
of each class of a good or service. Application
and
administration
of Act
Application
for
registration
of trade mark
194 No. 11 of 2023 Trade Marks

ct
of each class of a good or service. Application
and
administration
of Act
Application
for
registration
of trade mark
194 No. 11 of 2023 Trade Marks

(4) Where an application for registration of a trade mark under
subsection (1) is to be made by a person not resident in the Republic,
that person shall appoint a trade mark agent domiciled in the
Republic to apply for the registration of a trade mark. (5) Despite subsection (1), a person resident in the Republic
may appoint a trade mark agent domiciled in the Republic to apply
for the registration of a trade mark. (6) A trade mark agent appointed under subsection (4) or (5)
shall file with the Registrar, an authorisation of agent in a prescribed
manner and form on payment of a prescribed fee. 5. (1) Two or more persons may make a joint application for
registration of a trade mark where—
(a) any of the persons is entitled to the use of the trade
mark; or
(b) in relation to a good or service, those persons are
connected in the course of trade. (2) Subject to this Act, two or more applicants may be
registered as joint proprietors. (3) Joint proprietors of a trade mark have the right to use the
trade mark as if the right is vested in one person. 6.

egistered as joint proprietors. (3) Joint proprietors of a trade mark have the right to use the
trade mark as if the right is vested in one person. 6.

(1) A person may apply to the Registrar for the registration
of a series of trade marks in a prescribed manner and form on
payment of a prescribed fee. (2) The Registrar shall, for purposes of registration of a trade
mark, consider a series application as a single application. 7. (1) An applicant shall complete the application for
registration of a trade mark within twelve months from the date of
filing the application with the Registrar. (2) The Registrar may, three months before the expiry of the
period under subsection (1), notify the applicant to complete the
application for registration in the prescribed manner and form. (3) The Registrar shall, where an applicant fails to comply
with a notice under subsection (2), treat the application as
abandoned. (4) Despite subsection (3), the Registrar shall not treat an
application for registration of a trade mark as abandoned, if that
application—
Joint
application
Period for
completion
of
application
for
registration
Series
application
Trade Marks [No. 11 of 2023 195

doned, if that
application—
Joint
application
Period for
completion
of
application
for
registration
Series
application
Trade Marks [No. 11 of 2023 195

(a) has been opposed and is pending determination by the
Registrar or the Court; or
(b) is pending cancellation or other proceedings under this
Act. (5) The Registrar shall, where the Registrar or Court
determines the matter under subsection (4) in favour of an applicant,
notify the applicant in accordance with subsection (2). 8. An applicant’s right in relation to an application for
registration of a trade mark shall commence from the date of filing
of the application for registration of a trade mark with the Registrar. 9. The Registrar shall, for purposes of registration of a trade
mark, determine the classification of a good or service, in
accordance with international best practice. 10. The Registrar shall, where an application for the
registration of a trade mark contains several classes of goods or
services, treat that application as a single application for registration
of the goods or services specified under that application. 11.

s of goods or
services, treat that application as a single application for registration
of the goods or services specified under that application. 11.

(1) An applicant may, before a trade mark is registered,
apply to the Registrar for the division of an application for the
registration of a trade mark in a prescribed manner and form on
payment of a prescribed fee, where that application consists of—
(a) a series of applications for the registration of a trade
mark;
(b) multiple classes within an application for the registration
of a trade mark; or
(c) specific goods or services within an application for the
registration of a trade mark. (2) The Registrar may grant or reject an application under
subsection (1). (3) The Registrar shall, where the Registrar rejects an
application under subsection (2), inform the applicant, and give
reasons for the rejection. (4) The Registrar shall, where the Registrar grants an
application under subsection (2), treat the part that is divided as—
(a) independent of the original application for registration
of a trade mark; and
(b) having retained the filing date of the original application
for registration of a trade mark. Commencement
of applicant’s
right
Classification
of good or
service
Single
application
for multiple
classes
Division of
application
196 No. 11 of 2023 Trade Marks

of applicant’s
right
Classification
of good or
service
Single
application
for multiple
classes
Division of
application
196 No. 11 of 2023 Trade Marks

12. The date of filing of an application for registration of a
trade mark shall be the date on which the applicant complies with
the requirements specified in section 4. 13. Where two or more applications for registration of an
identical or similar trade mark relating to an identical or similar
good or service are filed with the Registrar by different applicants,
the Registrar shall give priority to the application filed first. 14. (1) A person who has duly filed an application for
registration of a trade mark in a Convention country and has filed
an application for registration of the same trade mark in the Republic
may claim a right of priority within a period of six months from the
date of filing of the application for registration of the trade mark in
the Convention country. (2) The Registrar shall, where an application for registration
of a trade mark is made in the Republic under subsection (1), enter
in the Register the date on which the application was filed in a
Convention country as the date on which the application was filed.

section (1), enter
in the Register the date on which the application was filed in a
Convention country as the date on which the application was filed.

(3) An applicant shall not claim a priority right on the basis of
an application that was withdrawn, abandoned or rejected by a
relevant authority in a Convention country. (4) An applicant who intends to claim a right of priority shall
make a declaration of priority, in a prescribed manner. (5) The particulars of the declaration of priority under
subsection (4) shall be published in the Intellectual Property Journal. (6) A right of priority arising out of an application filed in a
Convention country shall be submitted with an application filed in
the Republic. (7) A person who does not claim the right of priority within the
period of six months referred to in subsection (1) shall lose that
right of priority. 15. (1) The Registrar shall, on receipt of an application for
registration of a trade mark, conduct a formality examination to
determine whether the application for registration of a trade mark
meets the requirements specified in section 4.

, conduct a formality examination to
determine whether the application for registration of a trade mark
meets the requirements specified in section 4.

(2) The Registrar shall, where the Registrar conducts the
formality examination under subsection (1), and is of the opinion
that an application does not meet the requirements specified in
section 4, request the applicant, in writing, to make the necessary
amendments to the application. Filing date of
application
Priority of
application
for
registration of
identical or
similar trade
mark
Priority
claim
Formality
examination
of
application
Trade Marks [No. 11 of 2023 197

of
application
for
registration of
identical or
similar trade
mark
Priority
claim
Formality
examination
of
application
Trade Marks [No. 11 of 2023 197

(3) The amendment under subsection (2) shall be in the
prescribed manner and form on payment of a prescribed fee. (4) The Registrar shall, where an applicant does not make the
necessary amendments after the request under subsection (2), treat
the application as abandoned. 16. (1) The Registrar shall, where the Registrar is satisfied
after a formality examination under section 15 that an application
for registration of a trade mark meets the requirements specified
in this Act, conduct a substantive examination to determine whether
a mark is capable of being registered as a trade mark under this
Act. (2) The Registrar shall, on completion of the substantive
examination under subsection (1), produce a report. (3) The Registrar shall accept or reject the application for
registration of a trade mark taking into consideration the report
under subsection (2). (4) Where the Registrar intends to reject the application for
registration of a trade mark, the Registrar shall notify the applicant
of the intention to reject the registration and require the applicant,
within sixty days of the notification to—
(a) take remedial measures; or
(b) show cause why the application should not be rejected.

ire the applicant,
within sixty days of the notification to—
(a) take remedial measures; or
(b) show cause why the application should not be rejected.

(5) The Registrar shall, where the Registrar rejects an
application for registration of a trade mark under subsection (3),
notify the applicant, in writing, of the Registrar’s decision and give
reasons for the rejection. (6) The Registrar shall not reject an application for registration
of a trade mark under this section where an applicant takes remedial
measures to the satisfaction of the Registrar within the period
specified in subsection (4). (7) The Registrar shall, in making a final determination on an
application for registration of a trade mark, consider the submissions
made by an applicant under subsection (4). (8) A person who is dissatisfied with the decision of the
Registrar under this section may, within three months of receipt of
the decision of the Registrar, appeal to the Court. (9) The Registrar shall, where a notice of appeal is not filed in
accordance with subsection (8), treat the application for registration
of a trade mark as abandoned. Substantive
examination
of
application
198 No. 11 of 2023 Trade Marks

ection (8), treat the application for registration
of a trade mark as abandoned. Substantive
examination
of
application
198 No. 11 of 2023 Trade Marks

17. (1) An applicant shall, where the Registrar accepts an
application for registration of a trade mark under this Act, publish
the acceptance of the application in the Intellectual Property Journal
within ninety days of receipt of the acceptance of the application,
on payment of a prescribed fee. (2) The Registrar shall, where an applicant fails to publish the
acceptance of an application for registration of a trade mark in
accordance with subsection (1), treat the application for registration
of a trade mark as abandoned. (3) Despite subsection (2), an applicant may apply for the
restoration of an application for the registration of a trade mark in
a prescribed manner and form on payment of a prescribed fee. (4) Where the Registrar restores an application for registration
of a trade mark under subsection (3), that application shall retain
the original date of filing.

he Registrar restores an application for registration
of a trade mark under subsection (3), that application shall retain
the original date of filing.

(5) Despite subsection (3), the Registrar shall not accept an
application for restoration of an application for registration of a
trade mark where the—
(a) period of twelve months specified in section 7 (1) has
elapsed; or
(b) application for restoration is made after nine months
from the date of filing of the application. 18. (1) An applicant may, before the Registrar registers a
trade mark, withdraw an application for registration of a trade mark
or restrict a good or service covered by an application for registration
of a trade mark in a prescribed manner and form on payment of a
prescribed fee. (2) The Registrar shall, where an applicant withdraws or
restricts a good or service covered in the application for registration
of a trade mark after the acceptance of the application for
registration of a trade mark is published in accordance with section
17, publish the withdrawal or restriction in the Intellectual Property
Journal. 19.

gistration of a trade mark is published in accordance with section
17, publish the withdrawal or restriction in the Intellectual Property
Journal. 19.

(1) A person may, within sixty days of the date of
publication of the acceptance of the application for registration of
a trade mark in the Intellectual Property Journal under section 17,
file with the Registrar a notice of opposition to the registration of a
trade mark in a prescribed manner and form on payment of a
prescribed fee. Publication
of
acceptance
of
application
Withdrawal
of
application,
or restriction
of goods
or services
covered by
application
for
registration
of trade
mark
Opposition
to
registration
of trade
mark
Trade Marks [No. 11 of 2023 199

on
of goods
or services
covered by
application
for
registration
of trade
mark
Opposition
to
registration
of trade
mark
Trade Marks [No. 11 of 2023 199

200 No. 11 of 2023] Trade Marks
Dismissal of
notice
of
opposition
(2) The notice filed under subsection (1) shall be accompanied
by evidence in support of the opposition to the registration of a
trade mark in the prescribed manner. (3) A person shall not file an opposition under subsection (1),
unless that person has an interest or right in the trade mark which
would be prejudiced if the trade mark is registered. 20. A person may oppose an application for registration of a
trade mark on—
(a) the grounds set out in sections 41 and 42; or
(b) the ground that the application for registration of the
trade mark was made in bad faith. 21. (1) An applicant who intends to respond to a notice of
opposition to the application for registration of a trade mark under
section 19 shall, within sixty days of receipt of the notice of
opposition, file with the Registrar a counter statement in a prescribed
manner and form on payment of a prescribed fee. (2) The counter statement filed under subsection (1) shall be
accompanied by evidence in support of the application in a prescribed
manner.

ribed fee. (2) The counter statement filed under subsection (1) shall be
accompanied by evidence in support of the application in a prescribed
manner.

(3) The Registrar shall, where an applicant fails to file a counter
statement in accordance with subsection (1), treat the application
for registration of a trade mark as abandoned. 22. A person who files a notice of opposition to an
application for registration of a trademark under section 19 may,
within thirty days of receipt of the counter statement, file with the
Registrar evidence in reply. 23. (1) The Registrar shall hear an application to oppose the
registration of a trade mark filed under section 19 in a prescribed
manner. (2) The Registrar may at the conclusion of the hearing—
(a) refuse to register the trade mark; or
(b) register the trade mark with, or without, conditions in
respect of a good or service specified in the application. 24. (1) The Registrar may dismiss an opposition to the
application for registration of a trade mark without hearing an
applicant where the Registrar considers that the opposition is
frivolous, vexatious or lacks merit. Grounds of
opposition
Counter
statement to
notice of
opposition
Evidence in
reply of
application
for
registration
of trade
mark
Hearing

r lacks merit. Grounds of
opposition
Counter
statement to
notice of
opposition
Evidence in
reply of
application
for
registration
of trade
mark
Hearing

Trade Marks [No. 11 of 2023 201
(2) The Registrar shall, where an opposition to an application
for registration of a trade mark is dismissed under subsection (1),
notify the applicant, in writing. PART III
REGISTRATION OF TRADE MARKS
25. (1) The Registrar shall register a trade mark and issue a
certificate of registration to an applicant where the Registrar is
satisfied that—
(a) the application for registration of a trade mark meets
the requirements under this Act;
(b) the application for registration of a trade mark is not
opposed; and
(c) where an application for registration has been opposed,
the opposition has been dismissed. (2) Despite subsection (1), the Registrar shall not register and
issue a certificate of registration unless the applicant has made a
request for registration of a trademark in a prescribed manner and
form on payment of a prescribed fee. (3) The Registrar shall, when registering a trade mark—
(a) enter in the Register the date of registration of the
trademark in accordance with section 26; and
(b) publish in the Intellectual Property Journal a reference
to the registration.

of registration of the
trademark in accordance with section 26; and
(b) publish in the Intellectual Property Journal a reference
to the registration.

(4) A certificate of registration issued under subsection (1)
shall be prima facie evidence of any matter in respect of the
registration of the trade mark. 26. The date of filing of an application for registration of a
trade mark shall be considered as the date of registration of the
trade mark. 27. (1) The Registrar may, where a trade mark contains a mark
that is not separately registered by a proprietor as a trade mark, or
a matter that is not common to a trade or business, or that mark is
not distinctive in deciding whether a trade mark can be entered in
the Register—
(a) disclaim an exclusive right to the use of all or any portion
of the matters that a proprietor is not entitled to; or
(b) make any other disclaimer or statement that the
Registrar considers necessary for the purpose of
defining the proprietor’s rights in relation to the
registration. Registration
of trade
mark
Date of
registration
Disclaimer of
part of trade
mark

of
defining the proprietor’s rights in relation to the
registration. Registration
of trade
mark
Date of
registration
Disclaimer of
part of trade
mark

(2) A disclaimer or statement made by the Registrar under
subsection (1) shall be entered in the Register and shall restrict the
rights of a proprietor. 28. The Registrar may, in determining whether a trade mark
can be registered, or remain on the Register, consider public interest
as a condition of the trade mark being, or remaining, on the Register. 29. (1) A person who claims to be entitled to the exclusive
right to the use of a part of a trade mark may apply to the Registrar
to register the whole, or part, of that trade mark, as a separate
trade mark. (2) Subject to subsection (1), each separate trade mark shall
satisfy the requirements for registration of a trade mark under this
Act. 30.

rade mark. (2) Subject to subsection (1), each separate trade mark shall
satisfy the requirements for registration of a trade mark under this
Act. 30.

The Registrar may register a trade mark as a series in
one registration where a person who seeks to register a trade mark
claims to be the proprietor of several trade marks in respect of the
same, or similar good or service, or description of a good or service,
that resemble each other in a material particular, but differ in respect
of—
(a) statement of the good or service in relation to which the
good or service is respectively used or proposed to be
used;
(b) statement of number, price, quality or name of place;
(c) other matter of a non distinctive character that does not
substantially affect the identity of the trade mark; or
(d) colour. 31.

r name of place;
(c) other matter of a non distinctive character that does not
substantially affect the identity of the trade mark; or
(d) colour. 31.

(1) The Registrar may enter a trade mark in the Register
as an associated trade mark with an earlier registered trade mark
or application for registration of a trade mark where the trade mark
is—
(a) in the name of the same proprietor;
(b) in respect of the same or similar good or service or
description of a good or service; and
(c) identical with, or similar to, another trade mark that is
registered or is the subject of an application for
registration of a trade mark and is likely to deceive or
cause confusion when used by a person other than the
proprietor. Disclaimer
on grounds
of public
interest
Registration
of separate
trade marks
Registration
of series of
trade marks
Registration
of trade
mark as
associated
trade mark
202 No. 11 of 2023] Trade Marks

tion
of separate
trade marks
Registration
of series of
trade marks
Registration
of trade
mark as
associated
trade mark
202 No. 11 of 2023] Trade Marks

(2) A trade mark shall, where the trade mark is registered as
a separate trade mark in the name of the same proprietor in
accordance with section 29, be registered as an associated trade
mark. (3) A trade mark that is registered as, or that is considered to
be, an associated trade mark is assignable or transmissible
collectively and not separately. (4) The Registrar may, on an application made by a proprietor,
and where the Registrar is satisfied that there is no likelihood of
deception or confusion being caused if a trade mark is used by
another person in relation to a good or service in respect of which
that trade mark is registered, dissolve the association of trade marks
and amend the Register accordingly. (5) An application under subsection (4) shall be made in a
prescribed manner and form on payment of a prescribed fee. 32.

nd the Register accordingly. (5) An application under subsection (4) shall be made in a
prescribed manner and form on payment of a prescribed fee. 32.

The Registrar shall not accept an application for registration
of a trade mark that contains—
(a) a word that suggests that the word is protected by
another intellectual property right or a word in a language,
or an abbreviation of that word to the like effect; or
(b) the word “President”, “Republic”, “Zambia”, or a letter,
device or representation of the image of the President
that is likely to lead a person to believe that the applicant
either has, or has had, the patronage or authorisation of
the President, or patronage or authorisation from the
Government, whether or not that may be the case. 33. The Registrar shall not register a trade mark that contains
the name, or representation of the image, of a known person,
whether living or dead, as part of the trade mark, unless the applicant
has obtained the written consent of the—
(a) person whose name, or representation of whose image,
is contained in the trade mark; or
(b) legal representative of the person whose name, or
representation of whose image, is contained in the trade
mark. 34.

ntained in the trade mark; or
(b) legal representative of the person whose name, or
representation of whose image, is contained in the trade
mark. 34.

(1) The Registrar may accept an application for the
registration of a trade mark that is identical or similar to an earlier
application or registration of a trade mark where the applicant shows
to the satisfaction of the Registrar that—
Trade Marks [No. 11 of 2023 203
Non-
registrable
words
Trade mark
containing
name of
known
person
Honest
concurrent
use

faction of the Registrar that—
Trade Marks [No. 11 of 2023 203
Non-
registrable
words
Trade mark
containing
name of
known
person
Honest
concurrent
use

(a) there has been an honest concurrent use in the course
of trade of the trade mark for which registration is sought
in the Republic; and
(b) due to special circumstances, it is proper for the trade
mark to be registered. (2) The proprietor of an earlier application or registration of a
trade mark may oppose the Registrar’s acceptance of an application
made under subsection (1). (3) The Registrar may impose limitations and conditions to the
registration of a trade mark under subsection (1) that the Registrar
may consider necessary. 35. (1) The Registrar shall not register a mark as a trade mark
if the mark contains a—
(a) national symbol of the Republic;
(b) representation or design, in whole or part, of a national
symbol of the Republic; or
(c) device resembling a national symbol of the Republic
which is likely to be mistaken for a national symbol of
the Republic. (2) Despite subsection (1), an applicant who intends to register
a trade mark that contains a mark referred to in subsection (1)
shall obtain the written consent of the Minister responsible for
national symbols in accordance with the National Flag and Armorial
Ensigns Act.

n (1)
shall obtain the written consent of the Minister responsible for
national symbols in accordance with the National Flag and Armorial
Ensigns Act.

(3) The Registrar may, where an applicant has obtained written
consent from the Minister under subsection (2), register a trademark
that contains a mark referred to in subsection (1). (4) This section applies to any other emblem of the Republic. 36. (1) The Registrar shall not, except with the prior written
approval of a competent authority of a Convention country, register
a mark as a trade mark if that mark contains—
(a) the flag of a Convention country, unless the use of the
flag in the manner proposed is permitted without
authorisation;
(b) an armorial bearing or other state emblem of a
Convention country protected under the Paris Convention
or TRIPS Agreement; or
(c) an official sign or hallmark—
204 No. 11 of 2023] Trade Marks
Registration
of trade
mark
containing
representation
of national
symbol
Cap.6
Registration
of trade
mark
containing
flag,
armorial
bearings or
official signs
of
Convention
country

ntaining
representation
of national
symbol
Cap.6
Registration
of trade
mark
containing
flag,
armorial
bearings or
official signs
of
Convention
country

(i) adopted by a Convention country;
(ii) that indicates control and
warranty adopted by a
Convention country in relation to
a good or service of the same or
similar kind as that good or
service in respect of which the
trade mark is to be registered; and
(iii) that is protected under the Paris
Convention or TRIPS
Agreement. (2) This section applies to a mark that imitates or contains a
representation of a flag, armorial bearing, state emblem, official
sign or hallmark of a Convention country. (3) Despite subsections (1) and (2), the Registrar shall register
a mark as a trade mark, including a trade mark similar to that of a
Convention country if—
(a) an applicant is a national of that Convention country;
and
(b) the competent authority of that Convention country has
authorised the applicant to make use of the flag, armorial
bearing, state emblem, official sign or trade mark of the
Convention country. 37.

untry has
authorised the applicant to make use of the flag, armorial
bearing, state emblem, official sign or trade mark of the
Convention country. 37.

(1) Subject to subsection (2), the Registrar shall not, without
the authorisation of an international organisation to which one or
more Convention countries are members, register a trade mark
that contains an armorial bearing, flag, emblem, abbreviation or a
name of an international organisation where that armorial bearing,
flag, emblem, abbreviation or name of the international organisation
is protected under the Paris Convention or TRIPS Agreement. (2) Despite subsection (1), the Registrar may register a trade
mark if the Registrar considers that the use of an armorial bearing,
flag, emblem, abbreviation or a name of an international organisation
specified in subsection (1), in the manner applied for, is not likely
to—
(a) suggest to the public that a connection exists between
the international organisation and the trade mark; or
(b) mislead the public as to the existence of a connection
between the user and the international organisation. Registration
of trade
mark
containing
armorial
bearings,
flag, or
other
symbol
of
international
organisation
Trade Marks [No. 11 of 2023 205

nisation. Registration
of trade
mark
containing
armorial
bearings,
flag, or
other
symbol
of
international
organisation
Trade Marks [No. 11 of 2023 205

(3) This section applies to a mark which imitates an armorial
bearing, a flag, emblem, abbreviation or a name of an
international organisation referred to in subsection (1). 38. (1) For purposes of sections 36 and 37, an armorial bearing,
flag, state emblem, emblem, official sign, hallmark, abbreviation or
name of a Convention country or international organisation
protected under the Paris Convention shall be protected under
this Act to the extent that—
(a) the Convention country or the international organisation
concerned has notified the Republic in accordance with
paragraph (3) of Article 6ter of the Paris Convention, or
under that Article as applied by the TRIPS Agreement,
that the Convention country or international organisation
desires to protect the armorial bearing, flag, state
emblem, emblem, official sign, hallmark, abbreviation
or name;
(b) the notification remains in force; and
(c) the Republic has not objected, or has withdrawn its
objection, to the notification in accordance with
paragraph (4) of Article 6ter of the Paris Convention or
under that Article as applied by the TRIPS Agreement.

to the notification in accordance with
paragraph (4) of Article 6ter of the Paris Convention or
under that Article as applied by the TRIPS Agreement.

(2) A communication under subsection (1) shall have effect
in relation to an application for registration of a trade mark that is
made after two months from the date of receipt of the
communication. (3) The Registrar shall keep and make available for public
inspection, during normal working hours, a list of an armorial bearing,
flags, other emblems, state emblems, official signs, hallmarks,
abbreviations and names of Convention countries and international
organisations protected under the Paris Convention in accordance
with notifications specified in subsection (2). 39. (1) A trade mark may be limited, wholly or in part, to a
particular colour or combination of colours. (2) The Registrar shall, before registering a trade mark,
consider whether the trade mark is limited wholly or in part, to a
particular colour or combination of colours. (3) Where a trade mark is registered without limitation to a
particular colour or combination of colours, the trade mark shall be
considered to be registered for all colours. Emblems,
official
signs or
hallmarks
protected
under the
Paris
Convention
or TRIPS
Agreement
Limitation
of trade
mark to
particular
colours
206 No. 11 of 2023] Trade Marks

ns or
hallmarks
protected
under the
Paris
Convention
or TRIPS
Agreement
Limitation
of trade
mark to
particular
colours
206 No. 11 of 2023] Trade Marks

(4) A trade mark considered to be registered for all colours
does not enjoy exclusive rights to any registered colour. 40. The Registrar shall not register a mark as a trade mark if
the mark includes a word that is—
(a) commonly used and is an accepted name of a single
chemical element or compound in respect of a chemical
substance or preparation;
(b) declared by the World Health Organisation, and notified
to the public by the Registrar, in the prescribed manner,
as an International Non-Proprietary Name; or
(c) deceptively similar to a name referred to in paragraph
(b). 41.

Registrar, in the prescribed manner,
as an International Non-Proprietary Name; or
(c) deceptively similar to a name referred to in paragraph
(b). 41.

(1) Subject to subsection (2), the Registrar shall not register
a mark as a trade mark where that mark—
(a) does not satisfy the definition of a trade mark under
section 2;
(b) consists exclusively of a mark or indication that may
serve, in the course of trade, to designate the kind,
quality, quantity, intended purpose, value, geographical
origin, time of production of a good or rendering of
services, or other characteristics of a good or service;
(c) according to its ordinary signification, is a surname;
(d) consists exclusively of a mark or indication that has
become customary in a specific language or in the bona
fide and established practice of a trade;
(e) is contrary to law, public policy or accepted principles
of morality;
(f) comprises or contains a scandalous or obscene matter;
(g) is of a nature intended to deceive, or cause confusion
on the part of the public as to the nature, quality or
geographical origin of a good or service;
(h) consists exclusively of a shape that—
(i) results from the nature of that good;
(ii) is necessary to obtain a technical result; or
(iii) gives substantial value to the good; or
(i) is a letter, numeral or a number, or a combination of
letters, numerals or numbers, that is not defined in a
manner intended to give the mark a distinctive character.

eral or a number, or a combination of
letters, numerals or numbers, that is not defined in a
manner intended to give the mark a distinctive character.

Trade Marks [No. 11 of 2023 207
Absolute
grounds for
refusal to
register
mark as
trade mark
Prohibition
of
registration
of names
of chemical
elements
or
International
Non-
Proprietary
Names

e
grounds for
refusal to
register
mark as
trade mark
Prohibition
of
registration
of names
of chemical
elements
or
International
Non-
Proprietary
Names

(2) The Registrar shall not refuse to register a mark as a trade
mark under subsection (1) where the mark has acquired a distinctive
character as a result of the mark’s use before the date of application
for registration of a trade mark. 42.

where the mark has acquired a distinctive
character as a result of the mark’s use before the date of application
for registration of a trade mark. 42.

(1) The Registrar shall not register a mark as a trade mark,
where the mark—
(a) is identical with, or similar to, an earlier application or
registration of a trade mark and—
(i) relates to a good or service identical with or similar
to a good or service that was the subject of an
earlier application or registration of a trade mark;
and
(ii) there exists a likelihood of deception or confusion,
on the part of the public, which includes the
likelihood of association with an earlier application
or registration of a trade mark;
(b) constitutes, or the essential part of the mark constitutes, a
reproduction, imitation or translation of a well-known trade
mark and the use of the mark is—
(i) in respect of a good or service identical with or
similar to a good or service for which the trade
mark is well-known; and
(ii) likely to deceive or cause confusion; or
(c) constitutes, or the essential part of the mark constitutes, a
reproduction, imitation or translation of a well known trade
mark registered in the Republic for a good or service that
is neither identical nor similar to the good or service in
respect of which the well-known trade mark is registered
and the use of the trade mark in relation to that good or
service would—
(i) indicate a connection between that good or service
and the proprietor of the registered trade mark;
(ii) likely damage the interest of the proprietor of the
registered trade mark; and
(iii) likely cause confusion with the name of a company
or business registered in the Republic.

st of the proprietor of the
registered trade mark; and
(iii) likely cause confusion with the name of a company
or business registered in the Republic.

(2) Despite subsection (1), the Registrar may register a trade
mark if a proprietor or a person with an interest in an earlier right
consents to the registration. 208 No. 11 of 2023] Trade Marks
Relative
grounds for
refusal of
registration

person with an interest in an earlier right
consents to the registration. 208 No. 11 of 2023] Trade Marks
Relative
grounds for
refusal of
registration

43. Subject to this Act, a registered trade mark shall be valid
for a period of ten years from the date of filing the application for
registration of that trade mark. 44. (1) A proprietor or licensee may apply to the Registrar for
renewal of the registration of a trade mark within six months before
the date of expiry of the registration of a trade mark in a prescribed
manner and form on payment of a prescribed fee. (2) The Registrar may, before the expiry of the registration of
a trade mark, send a notice to a proprietor or a licensee of the date
of expiration of a trade mark, in a prescribed manner and form. (3) Despite subsection (2), the registration of a trade mark
shall expire on the date of expiry of the registration. (4) The Registrar shall, on receipt of an application made under
subsection (1), renew the registration of a trade mark and issue a
certificate of renewal in a prescribed form. (5) The certificate of renewal issued under subsection (4),
shall be valid for a period of ten years from the date of expiry of
the registration of a trade mark or the last date of renewal of a
registration.

),
shall be valid for a period of ten years from the date of expiry of
the registration of a trade mark or the last date of renewal of a
registration.

(6) A proprietor or licensee may, within six months after the
expiration of the last registration or renewal of a trade mark, apply
for late renewal of registration of a trade mark. (7) A surcharge shall be imposed on an application made under
subsection (6) as prescribed. (8) The Registrar shall, where a proprietor or licensee does
not make an application in accordance with subsections (1) or (6),
remove a trade mark from the Register six months after the expiry
of registration of a trade mark. (9) A proprietor or licensee may, where a trade mark has been
removed from the Register under subsection (8), apply to the
Registrar, within six months of the removal of a trade mark from
the Register, for the restoration of a trade mark in a prescribed
manner and form on payment of a prescribed fee. (10) The Registrar shall, within thirty days of receipt of an
application under subsection (9), publish an application for
restoration of a trade mark in the Intellectual Property Journal. (11) The Registrar may restore a trade mark to the Register
for a period of ten years from the date of expiry of the last
registration on terms and conditions that the Registrar may
determine. Trade Marks [No.

for a period of ten years from the date of expiry of the last
registration on terms and conditions that the Registrar may
determine. Trade Marks [No.

11 of 2023 209
Validity of
registration
of trade
mark
Renewal of
registration
of trade
mark and
notice of
expiry

11 of 2023 209
Validity of
registration
of trade
mark
Renewal of
registration
of trade
mark and
notice of
expiry

(12) The Registrar shall not accept an application for the
registration of an identical or similar trade mark relating to a similar
good or service where a trade mark has been removed from the
Register, within a period of one year of the date of removal of a
trade mark from the Register. (13) Subsection (12) does not apply where the Registrar is
satisfied that—
(a) there has been no bona fide use, by a proprietor or
licensee, of a trade mark that has been removed from
the Register within two years immediately preceding
the trade mark’s removal from the Register; or
(b) deception or confusion is not likely to arise from the
use of a trade mark that is the subject of an application
for registration by reason of previous use of the trade
mark that has been removed from the Register. 45. (1) A proprietor may apply to the Registrar for variation
of registration of a trade mark in a prescribed manner and form on
payment of a prescribed fee. (2) An application made under subsection (1) shall relate to
some or all of the goods or services for which the trade mark is
registered. 46.

bed fee. (2) An application made under subsection (1) shall relate to
some or all of the goods or services for which the trade mark is
registered. 46.

(1) The Registrar may, on application by a proprietor in a
prescribed manner and form and on payment of a prescribed fee,
alter a registered trade mark if the alteration does not substantially
affect the identity of a trade mark. (2) The Registrar shall, within ninety days of receipt of an
application under subsection (2), publish the application for
alteration of a registered trade mark in the Intellectual Property
Journal. (3) Sections 19, 20, 21, 22 and 23 apply, with necessary
modifications, on the publication of the application for alteration
of a registered trade mark under this section. 47. (1) A proprietor or a person with an interest in a trade
mark may apply to the Registrar for cancellation of a registration
of a trade mark in a prescribed manner and form on payment of a
prescribed fee. (2) Where the application under subsection (1) is made by a
proprietor, the Registrar shall, on receipt of that application, cancel
the registration of a trade mark. 210 No. 11 of 2023] Trade Marks
Variation of
registration
Alteration
of
registered
trade mark
Cancellation
of
registered
trade
mark

n of a trade mark. 210 No. 11 of 2023] Trade Marks
Variation of
registration
Alteration
of
registered
trade mark
Cancellation
of
registered
trade
mark

(3) The Registrar may, on the Registrar’s own motion or on
application by a person with an interest in a trade mark under
subsection (1), cancel the registration of a trade mark—
(a) on the ground that a proprietor has contravened or failed
to observe a condition relating to the trade mark as
entered in the Register;
(b) on the death of a proprietor who is a natural person
and has no successor or legal representative appointed;
(c) in the case of a legal entity, on the dissolution of that
legal entity;
(d) where the trade mark has become a generic term that
designates a good for which the trade mark is
registered; or
(e) where the use of the trade mark by the proprietor or
licensee has caused the public to be misled as to the
kind, quality, quantity, or geographical origin of the goods
in respect of which the trade mark was registered.

used the public to be misled as to the
kind, quality, quantity, or geographical origin of the goods
in respect of which the trade mark was registered.

(4) The Registrar shall, before cancelling the registration of a
trade mark under subsection (3), publish in the Intellectual Property
Journal the intention to cancel the registration of the trade mark
and shall—
(a) give reasons for the intended cancellation; and
(b) require a proprietor to show cause, within a period of
sixty days, why the trade mark should not be cancelled. (5) The Registrar shall not cancel a trade mark under this
section if a proprietor takes remedial measures, to the satisfaction
of the Registrar, within the period specified under subsection (4). (6) The Registrar shall, in making a final determination on the
cancellation of registration of a trade mark, consider the submissions
made by a proprietor under subsection (4). (7) A proprietor shall, where a trade mark registration is
cancelled in accordance with this section, surrender the certificate
of registration to the Registrar. (8) The Registrar shall publish the cancellation of registration
of a trade mark in the Intellectual Property Journal.

registration to the Registrar. (8) The Registrar shall publish the cancellation of registration
of a trade mark in the Intellectual Property Journal.

(9) The cancellation of the registration of a trade mark shall
be effective when the cancellation is entered in the Register and
published in accordance with subsection (8). Trade Marks [No. 11 of 2023 211

k shall
be effective when the cancellation is entered in the Register and
published in accordance with subsection (8). Trade Marks [No. 11 of 2023 211

48 . (1) A person affected by a registered trade mark may
apply to the Registrar, in a prescribed manner and form on payment
of a prescribed fee, for the removal of that trade mark from the
Register in respect of any of the good or service for which that
trademark is registered on the ground that—
(a) the trade mark has not been used by a proprietor or
licensee for a continuous period of five years or more;
(b) an entry has wrongly remained on the Register;
(c) there is an error or defect in an entry in the Register; or
(d) the trade mark was fraudulently entered in the Register. (2) Despite subsection (1) (a), the Registrar shall not remove
a trade mark from the Register if it is proved that special
circumstances exist that have prevented a proprietor or licensee
from using the trade mark. (3) The Registrar shall not remove a trade mark from the
Register without providing a proprietor or a licensee an opportunity
to be heard and section 21 applies with necessary modifications. (4) The Registrar shall, after hearing the parties, remove the
trade mark from the Register or dismiss an application made under
subsection (1).

ions. (4) The Registrar shall, after hearing the parties, remove the
trade mark from the Register or dismiss an application made under
subsection (1).

(5) The Registrar shall, where the Registrar decides to remove
the trade mark from the Register, publish the removal of the trade
mark from the Register in the Intellectual Property Journal. (6) A removal of a trade mark from the Register shall be
effective after the date of the removal is entered in the Register
and published in the Intellectual Property Journal in accordance
with subsection (5). 49. Where a proprietor of an earlier registered trade mark or
user of a well known trade mark has acquiesced to the use of a
trade mark by a person in the Republic for a continuous period of
five years, that proprietor of the earlier registered trade mark or
user of a well known trade mark is not entitled to—
(a) apply for revocation of the registration of a trade mark
under this Act; or
(b) oppose the registration and use of the trade mark in
relation to a good or service in respect of which the
trade mark has been used. 212 No. 11 of 2023] Trade Marks
Removal of
trade mark
from
Register
Acquiescence
in use of
trade mark

n respect of which the
trade mark has been used. 212 No. 11 of 2023] Trade Marks
Removal of
trade mark
from
Register
Acquiescence
in use of
trade mark

PART IV
RIGHTS OF PROPRIETOR
50. (1) Subject to this Act, the registration of a trade mark
confers on a proprietor the exclusive right—
(a) to use the registered trade mark in relation to a good or
service in respect of which the trade mark is registered;
and
(b) to obtain relief in respect of infringement of the
registered trade mark in accordance with this Act. (2) Subject to subsections (1) and (3), the exclusive right to
the use of a registered trade mark is subject to the limitations and
conditions that the Registrar may impose on registration of the
trade mark. (3) Joint proprietors have exclusive rights to the use of a
registered trade mark as if the trade mark was registered by a
single proprietor, subject to the terms and conditions entered in the
Register, or an agreement made by the joint proprietors. (4) Despite subsection (3), each of the joint proprietors—
(a) is entitled to the use of the registered trade mark without
the consent of the other proprietor; and
(b) is not entitled, without the consent of the other proprietor
to—
(i) grant a licence to the use of the registered trade
mark; or
(ii) transfer or offer the registered trade mark as
security.

the other proprietor
to—
(i) grant a licence to the use of the registered trade
mark; or
(ii) transfer or offer the registered trade mark as
security.

(5) For purposes of this section, a member of a collective
association who owns a collective mark that is registered in respect
of a class of goods or services—
(a) has the right to the use of the collective mark in respect
of a good produced or service provided by the member;
and
(b) does not have the right to exclude another member from
using the trade mark in respect of a good produced or a
service provided by any other member. Rights
conferred
by
registration
of trade
mark
Trade Marks [No. 11 of 2023 213

n respect of a good produced or a
service provided by any other member. Rights
conferred
by
registration
of trade
mark
Trade Marks [No. 11 of 2023 213

51. (1) A proprietor of a well known trade mark is entitled
to—
(a) oppose an application for the registration of a trade mark;
(b) apply to the Registrar to cancel the registration of a
trade mark; or
(c) obtain an injunction to restrain the use of a trade mark
in the Republic,which is identical with, or similar to, the
well-known trade mark in relation to the identical or
similar good or service where the use of that trade mark
is likely to cause deception or confusion on the part of
the public. (2) This section does not affect the validity of a registered
trademark or the continued bona fide use of a trade mark which
existed before the commencement of this Act. (3) A trade mark shall be considered to be a well-known trade
mark if that trade mark is well-known in the Republic as being the
trade mark of a person who is a citizen of a Convention country or
domiciled, or has a real and effective industrial or commercial
establishment, in a Convention country, whether or not the person
carries on business in the Republic.

s a real and effective industrial or commercial
establishment, in a Convention country, whether or not the person
carries on business in the Republic.

(4) The Minister may, in addition to the consideration under
subsection (2), by statutory instrument, prescribe factors to be
taken into account in determining whether a trade mark is a well-
known trade mark in the Republic in accordance with subsection
(3). 52. Subject to any restriction on the commencement of
proceedings for infringement of a right of a proprietor under this
Act, the right that accrues to a proprietor is—
(a) subject to a limitation or condition that is entered in the
Register in respect of a registered trade mark;
(b) from the date of application for registration of a trade
mark; and
(c) conferred in respect of each component that is registered
as a separate trade mark. 53. A proprietor is not, under this Act, entitled to interfere
with, or restrain, the use by a person of a trade mark, which is
identical with, or similar to, the registered trade mark of the proprietor
if the trade mark relates to a good or service that the person or
person’s predecessor in title has continuously used from a date
prior to the—
214 No. 11 of 2023] Trade Marks
Protection
of well-
known trade
mark
Rights of
proprietor
in
infringement
proceedings
Protection
of
vested rights

the—
214 No. 11 of 2023] Trade Marks
Protection
of well-
known trade
mark
Rights of
proprietor
in
infringement
proceedings
Protection
of
vested rights

(a) use of the registered trade mark by the proprietor or
proprietor’s predecessor in title; or
(b) date of registration of the registered trade mark in the
name of the proprietor or proprietor’s predecessor in
title. 54. (1) The use of a trade mark or part of a trade mark, by a
proprietor or any other person, as a name or description of an article,
substance or service after the date of registration of a trade mark
does not affect the validity of the registered trade mark. (2) Despite subsection (1), a proprietor does not have an
exclusive right to the use of a trade mark in relation to an article,
substance, good or service of the same description, where a
registered trade mark or part of the trade mark has become
generally accepted within the relevant trade as a mark that—
(a) describes or is the name of an article, substance or
service; or
(b) is the commonly known way to describe or identify an
article formerly exploited under a patent, or a service
formerly provided as a patented process, and at least
two years has lapsed since the patent expired.

e formerly exploited under a patent, or a service
formerly provided as a patented process, and at least
two years has lapsed since the patent expired.

(3) A proprietor may, where a trade mark has acquired common
usage in the circumstances referred to in subsection (2), apply to
the Registrar for the amendment of the registration of a registered
trade mark in the prescribed manner and form on payment of a
prescribed fee. (4) Despite subsection (1), a person who is affected by the
circumstances set out in subsection (2), may apply to the Registrar
for the cancellation of a registered trade mark in accordance with
section 47 of this Act. 55. (1) A registered trade mark is personal property capable
of being—
(a) transferred by any means by which personal property
may be lawfully transferred including—
(i) assignment;
(ii) pledge;
(iii) testamentary disposition; or
(iv) operation of law; or
(b) licensed. Use of trade
mark as
description
of article,
substance
or service
Registered
trade mark
as property
Trade Marks [No. 11 of 2023 215

; or
(b) licensed. Use of trade
mark as
description
of article,
substance
or service
Registered
trade mark
as property
Trade Marks [No. 11 of 2023 215

(2) A registered trade mark may be a subject of a charge or
security in the same manner as other personal property. (3) Where a trade mark is subject to a charge or security, the
proprietor shall register the particulars of the charge or security in
the Registry established under the Movable Property (Security
Interest) Act, 2016. (4) Where a charge or security on a trade mark has been
registered under subsection (3), the Registrar shall record in respect
of that trade mark an endorsement on the Register as prescribed. 56. (1) A transfer of a trade mark may be partial and shall
apply to—
(a) some of the goods or services for which a trade mark is
registered; or
(b) the use of a trade mark in a particular manner or locality. (2) A transfer of a trade mark under subsection (1) shall be
valid where the transfer is—
(a) in writing;
(b) signed by, or on behalf of, a proprietor or the proprietor’s
assignee; and
(c) registered with the Agency in accordance with this Act. (3) A proprietor who intends to transfer a registered trade mark
shall apply to the Registrar for the registration of a transfer of the
trade mark in a prescribed manner and form on payment of a
prescribed fee.

mark
shall apply to the Registrar for the registration of a transfer of the
trade mark in a prescribed manner and form on payment of a
prescribed fee.

(4) The Registrar shall, on receipt of an application under
subsection (3)—
(a) in the case of an application for registration of an
assignment with goodwill, record the assignment in the
Register and issue a certificate of assignment; or
(b) in the case of an application for registration of an
assignment without goodwill, cause the proprietor to
publish a notice of the assignment in the Intellectual
Property Journal within six months of the date of
assignment or within a period that the Registrar may
determine. Act No.3 of
2016
Transfer of
trade mark
216 No 11 of 2023] Trade Marks

of the date of
assignment or within a period that the Registrar may
determine. Act No.3 of
2016
Transfer of
trade mark
216 No 11 of 2023] Trade Marks

(5) A person who intends to oppose the registration of an
assignment without goodwill shall, within sixty days of the date of
assignment under subsection 4 (b), file a notice of opposition with
the Registrar in a prescribed manner and form on payment of a
prescribed fee. (6) Sections 21 and 22 apply with the necessary modifications,
to an opposition filed under subsection (5). (7) The Registrar shall, in the case of an application for
registration of an assignment without goodwill, record the assignment
in the Register and issue a certificate of assignment in the prescribed
form where the—
(a) period for filing a notice of opposition has expired; or
(b) determination of an opposition is in favour of the
applicant. 57.

bed
form where the—
(a) period for filing a notice of opposition has expired; or
(b) determination of an opposition is in favour of the
applicant. 57.

Despite section 56, a trade mark is not transferable where
the transfer would result in exclusive rights to the use of the trade
mark subsisting in more than one person in relation to—
(a) an identical good or service;
(b) an identical description of a good or service;
(c) a good or service or description of good or service which
is associated with each other; or
(d) a similar or identical trade mark, where having regard
to the similarity of a good or service and a trade mark,
the use of that trade mark, in exercise of such rights is
likely to cause confusion on the part of the public. 58. Subject to this Act, an associated trade mark is transferable
or transmissible as a whole and not separately. PART V
PERMITTED USE AND LICENSEE
59. (1) A person who uses a registered trade mark with the
consent of a proprietor is considered to have permitted use of that
registered trade mark under this Act. (2) Despite subsection (1), a person shall only be considered
to have permitted use if that person is registered as a licensee under
this Act. Trade Marks [No. 11 of 2023 217
Restriction
on transfer
of trade
mark
Transfer or
transmission
of
associated
trade marks
Permitted
use

under
this Act. Trade Marks [No. 11 of 2023 217
Restriction
on transfer
of trade
mark
Transfer or
transmission
of
associated
trade marks
Permitted
use

(3) A permitted use of a registered trade mark may be general
or limited. (4) A limited permitted use of a registered trade mark may be
in respect of—
(a) all or any of the goods or services for which the trade
mark is registered; or
(b) the use of the trade mark in a particular manner or
locality. 60. (1) A person with permitted use of a registered trade mark
may be registered as a licensee. (2) A proprietor may apply to the Registrar for registration of a
person with permitted use of a registered trade mark as a licensee
in a prescribed manner and form on payment of a prescribed fee. (3) An application under subsection (2) shall be accompanied
by a licence agreement or a duly authenticated copy of that
agreement. (4) The Registrar shall, where an application under subsection
(2) meets the requirements of this Act, register a person with
permitted use as a licensee in respect of a registered trade mark
and—
(a) enter the particulars of the registration of a licensee in
the Register; and
(b) issue a certificate of registration as licensee in a prescribed
manner.

ter the particulars of the registration of a licensee in
the Register; and
(b) issue a certificate of registration as licensee in a prescribed
manner.

(5) The Registrar shall, within thirty days of the date of
registration of a licensee under subsection (4), publish a notice of
registration as licensee in the Intellectual Property Journal. 61. (1) A proprietor or licensee may apply to the Registrar for
the variation of the registration of a licensee in a prescribed manner
and form on payment of a prescribed fee. (2) An application under subsection (1) shall be accompanied
by an amended licence agreement or a duly authenticated copy of
that agreement. 62. (1) The Registrar may, on the Registrar’s own motion, in
the prescribed manner and form, cancel the registration of a licensee,
where—
218 No. 11 of 2023] Trade Marks
Registration
of licensee
Variation of
registration
of
licensee
Cancellation
of
registration
of
licensee

censee,
where—
218 No. 11 of 2023] Trade Marks
Registration
of licensee
Variation of
registration
of
licensee
Cancellation
of
registration
of
licensee

(a) a trade mark is no longer registered under this Act;
(b) the Registrar is satisfied that a proprietor or licensee
misrepresented, or failed to disclose some material fact
in an application for registration; or
(c) the Registrar is satisfied that the registration of a licensee
should not have been effected having regard to the rights
vested in the applicant. (2) The Registrar may, on an application made by a proprietor
or a licensee, in a prescribed manner and form on payment of a
prescribed fee, cancel the registration of a licensee, where—
(a) a proprietor or licensee applies for cancellation in
accordance with the licence agreement;
(b) the court has made an order for cancellation; or
(c) there is mutual consent by the proprietor and licensee
for cancellation. (3) The Registrar shall, within thirty days of the date of
cancellation of a registration of a licensee, publish a notice of the
cancellation in the Intellectual Property Journal. 63. (1) A licensee shall not transfer or transmit the right to the
use of the registered trade mark.

ancellation in the Intellectual Property Journal. 63. (1) A licensee shall not transfer or transmit the right to the
use of the registered trade mark.

(2) Where a licensee is a partner in a partnership, the right of
that licensee, shall not be considered to have been granted to the
partnership. PART VI
INFRINGEMENT OF REGISTERED TRADE MARK
64. (1) For purposes of this Act, a reference to an infringement
of a registered trade mark shall be construed as a reference to an
infringement of any rights of a proprietor. (2) A person is not entitled to institute infringement proceedings
to prevent an infringement or to recover damages in respect of the
infringement of an unregistered trade mark. (3) Despite subsection (2), nothing in this Act affects the right
of action of a proprietor against a person for passing off a good or
service as the good or service provided by another person and the
remedies available under that right. 65. (1) Subject to section 66, a person infringes a registered
trade mark if that person, not being a proprietor or licensee uses in
the course of trade—
Trade Marks [No. 11 of 2023 219
Infringement
of registered
trade mark
Infringing
acts
Prohibition
of transfer or
transmission
of trade
mark

of trade—
Trade Marks [No. 11 of 2023 219
Infringement
of registered
trade mark
Infringing
acts
Prohibition
of transfer or
transmission
of trade
mark

220 No. 11 of 2023] Trade Marks
(a) a mark that is identical with a registered trade mark in
relation to a good or service identical with, or similar to,
a good or service for which the trade mark is registered;
(b) a mark that is similar to a registered trade mark in relation
to a good or service identical with, or similar to, a good
or service for which the trade mark is registered, and
there exists a likelihood of confusion on the part of the
public, which includes the likelihood of association with
the registered trade mark; or
(c) in relation to a good or service, a mark that is identical
with, or similar to, a registered trade mark where the
trade mark has a reputation in the Republic and the use
of the mark, takes unfair advantage of, or is detrimental
to, the distinctive character or repute of the registered
trade mark. (2) A person infringes a registered trade mark if the person
knowingly, or having reason to believe that the trade mark is not
authorised by the proprietor or licensee, uses an infringing material.

if the person
knowingly, or having reason to believe that the trade mark is not
authorised by the proprietor or licensee, uses an infringing material.

(3) Despite subsection (1), a person shall not be prevented from
using a registered trade mark for purposes of identifying a good or
service as a good or service of a proprietor or licensee of a trade
mark. (4) For purposes of this section, a person uses a registered
trade mark if that person—
(a) applies a registered trade mark to a good or service, or
packaging of a good;
(b) offers, supplies or exposes a good or service, for sale,
under a registered trade mark;
(c) puts a good or service on the market under a registered
trade mark;
(d) stocks a good under a registered trade mark for purposes
of offering or exposing the good for sale or putting that
good on the market;
(e) imports or exports a good or service under a registered
trade mark;
(f) uses the registered trade mark on a paper used during
the course of business or for advertising; or
(g) manufactures or distributes a good under the registered
trade mark.

rade mark on a paper used during
the course of business or for advertising; or
(g) manufactures or distributes a good under the registered
trade mark.

Trade Marks [No. 11 of 2023 221
66. (1) Despite section 65, a person does not infringe a
registered trade mark if that person uses in relation to a trade
mark—
(a) a registered trade mark with the consent of a proprietor
or licensee;
(b) that person’s own name or predecessor in title’s name
or address;
(c) that person’s pseudonym or the predecessor in title’s
pseudonym;
(d) a mark which serves to designate the kind, quality,
quantity, intended purpose, value, geographical origin, time
of production of a good, rendering of service, or other
characteristics of a good or service; or
(e) a mark that is necessary to indicate the intended purpose
of a good or service. (2) The use of a registered trade mark that is identical with, or
similar to, another registered trade mark is not an infringement if a
trade mark is used in relation to a good or service for which a trade
mark is registered. (3) A person who has vested rights in an unregistered trade
mark under section 53 is not considered to have infringed a registered
trade mark through the use of the unregistered trade mark in the
course of a trade or business. 67.

3 is not considered to have infringed a registered
trade mark through the use of the unregistered trade mark in the
course of a trade or business. 67.

A person who advertises a good or service as a good or
service of a proprietor or licensee in accordance with honest and
industrial practices shall not be considered to have infringed a
registered trade mark. 68. (1) Despite section 65, a registered trade mark is not
infringed by the use of the trade mark for a good which has been
placed on the market anywhere in the world by the proprietor or
with the proprietor’s consent. (2) Subsection (1) does not apply where the condition of a
good has been changed or impaired after that good has been placed
on the market and the use of a registered trade mark in relation to
that good is detrimental to the distinctive character or repute of the
registered trade mark. 69. (1) Subject to this Act, a proprietor may commence an action
in the Court for infringement of a registered trade mark, if the
infringement occurs on or after the date on which a certificate of
registration of a trade mark is issued and sealed by the Registrar in
accordance with this Act. Exemptions
to
infringement
Exceptions
in relation to
advertising
Exhaustion
of rights
Commencement
of
infringement
proceedings

cordance with this Act. Exemptions
to
infringement
Exceptions
in relation to
advertising
Exhaustion
of rights
Commencement
of
infringement
proceedings

222 No. 11 of 2023] Trade Marks
(2) Infringement proceedings under subsection (1), may be
brought by a person who is a joint proprietor, except that a joint
proprietor may not, without leave of the Court, proceed with the
action unless each of the proprietors is joined to the proceedings. 70. (1) A licensee may, unless a licence agreement provides
otherwise, request a proprietor to commence infringement
proceedings in respect of a matter which affects that licensee’s
interests. (2) Where a proprietor refuses or fails to commence
infringement proceedings within two months after a licensee’s
request under subsection (1), a licensee may commence infringement
proceedings, in the licensee’s name, as if the licensee is the proprietor,
and the proprietor shall be joined as a party to the proceedings. 71. (1) Subject to subsection (5), a person may apply to the
Court for relief where that person has been threatened by another
person with infringement proceedings in relation to an act that does
not constitute an infringement act under section 65.

s been threatened by another
person with infringement proceedings in relation to an act that does
not constitute an infringement act under section 65.

(2) A person may apply to the Court under subsection (1) for
the following reliefs:
(a) a declaration that the threat is unjustifiable;
(b) an injunction against the continuation of the threat;
(c) damages in respect of any loss sustained as a result of
the threat; or
(d) any other relief that the Court may consider appropriate. (3) A person who is threatened in accordance with subsection
(1) is entitled to a relief claimed under subsection (2) unless a
proprietor or licensee proves to the Court that the act in respect of
which infringement proceedings are threatened constitute, or if done
would constitute, an infringement of a registered trade mark. (4) Despite subsection (3), where a proprietor or licensee proves
to the Court that the act in respect of which infringement proceedings
were threatened constitute, or if done would constitute, an
infringement of a registered trade mark, a person threatened under
subsection (1), is entitled to the relief claimed under subsection (2)
if that person proves to the Court that the registration of the trade
mark is no longer valid.

is entitled to the relief claimed under subsection (2)
if that person proves to the Court that the registration of the trade
mark is no longer valid.

(5) An application under subsection (1) shall not be commenced,
or if commenced may not proceed, if a proprietor or licensee
commences infringement proceedings of a trade mark, within thirty
days of a threat being made against a person threatened. Request by
licensee for
commencement
of
infringement
proceedings
Groundless
threats of
infringement
proceedings

eing made against a person threatened. Request by
licensee for
commencement
of
infringement
proceedings
Groundless
threats of
infringement
proceedings

Trade Marks [No. 11 of 2023 223
72. (1) A proprietor or licensee has, in infringement proceedings,
the right to any relief available for an infringement of a personal
property right. (2) Despite subsection (1), a proprietor or a licensee who
commences infringement proceedings may apply to the Court for
any of the following reliefs:
(a) an injunction;
(b) damages or an account of profits;
(c) an order for delivery up in accordance with section 73;
(d) in lieu of damages, at the option of a proprietor, a royalty
which would have been payable by a licensee for the
permitted use of a registered trade mark; or
(e) any other remedy that the Court may consider
appropriate. 73. (1) The Court may, on an application made by a proprietor
or licensee for an order for delivery up, order a person in possession,
custody or control of an infringing good, material or article to
surrender that good, material or article to the proprietor or any other
person the Court considers appropriate.

nfringing good, material or article to
surrender that good, material or article to the proprietor or any other
person the Court considers appropriate.

(2) An application for an order for delivery up under subsection
(1) shall be made where—
(a) the Court grants an order in accordance with section
74; or
(b) there are grounds for the Court to grant an order in
accordance with section 74. (3) The application under subsection (2) shall be made within
six years from the date on which, in the case of an—
(a) infringing good, a trade mark was applied to that good or
the packaging;
(b) infringing material, a trade mark was applied to that
material; or
(c) infringing article, that article was made. (4) Despite subsection (3), a proprietor may apply for delivery
up after the expiry of six years where that proprietor is prevented
from discovering the infringing good, material or article, due to fraud
or concealment. (5) An application under subsection (4), shall be made within
six months from the date of discovering the infringing good, material
or article. Remedies for
infringement
Order for
delivery up

shall be made within
six months from the date of discovering the infringing good, material
or article. Remedies for
infringement
Order for
delivery up

224 No. 11 of 2023] Trade Marks
(6) Nothing in this section shall affect the power that the Court
may exercise under this Act, or the court’s original jurisdiction. 74. (1) A proprietor may apply to the Court, where an infringing
good, material or article has been surrendered under section 73 (1),
for an order that the—
(a) infringing good, material or article be destroyed or
forfeited to a proprietor or another person that the Court
considers appropriate;
(b) person found to have infringed the registered trade mark
cause the offending mark to be erased, removed or
obliterated from the infringing good, material or article in
that person’s possession, custody or control;
(c) infringing good, material or article be disposed of outside
the channels of commerce in a manner that the Court
considers appropriate; or
(d) infringing good, material or article be dealt with as the
Court considers appropriate. (2) Despite subsection (1) (b), the Court may, in exceptional
circumstances, allow the release of goods into the channels of
commerce.

rs appropriate. (2) Despite subsection (1) (b), the Court may, in exceptional
circumstances, allow the release of goods into the channels of
commerce.

(3) The Court shall, in granting an order under subsection (1),
consider the following:
(a) that the disposal is in a manner that minimises the risks
of further infringements, and detriment to the rights of
the proprietor;
(b) the proprietor’s proposed manner of destruction or
disposal including the effect on the environment of the
manner of destruction; and
(c) the possibility, in the case of counterfeit trade mark goods,
of re exportation of the goods in an unaltered state. (4) The Court may, where there is more than one person with
an interest in an infringing good, material or article—
(a) direct that the infringing good, material or article be sold
or otherwise dealt with, and the proceeds divided among
the interested persons; or
(b) make any other order that the Court considers
appropriate. Order for
disposal

ealt with, and the proceeds divided among
the interested persons; or
(b) make any other order that the Court considers
appropriate. Order for
disposal

Trade Marks [No. 11 of 2023 225
(5) The Court shall, in deciding the order to grant under this
section, consider—
(a) whether the remedies specified under section 72 would
be adequate to compensate a proprietor or a licensee
and protect the interest of that proprietor or licensee;
(b) the need for proportionality between the gravity of the
infringement of a registered trade mark and the remedy
sought; or
(c) the interests of third parties. (6) An order made under subsection (1), shall take effect—
(a) at the expiry of the period within which a notice of an
appeal may be filed;
(b) on the final determination of an appeal; or
(c) on abandonment of the proceedings. (7) Where a Court does not make an order under subsection
(1), the person, in whose possession an infringing good, material or
article was before that good, material or article was surrendered
under section 73 (1), is entitled to the return of that good, material
or article. 75. (1) Where a proprietor has commenced infringement
proceedings under section 69, that proprietor may apply to the Court
for an order for a provisional measure.

e a proprietor has commenced infringement
proceedings under section 69, that proprietor may apply to the Court
for an order for a provisional measure.

(2) The Court may grant an order for a provisional measure
to—
(a) prevent an infringing good from entering into the channels
of commerce; and
(b) preserve relevant evidence relating to an alleged
infringement. (3) The Court may, before making an order under subsection
(2)—
(a) require an applicant to provide evidence to the satisfaction
of the Court that—
(i) the applicant is a proprietor whose right is
being infringed; or
(ii) an infringement of a proprietor’s right is
imminent;
Provisional
measures

t—
(i) the applicant is a proprietor whose right is
being infringed; or
(ii) an infringement of a proprietor’s right is
imminent;
Provisional
measures

226 No. 11 of 2023] Trade Marks
(b) order an applicant to provide security that is sufficient to
protect the respondent; and
(c) require an applicant to provide other information
necessary for the identification of a good, material or
article. (4) A Court may make an order for a provisional measure
without giving the respondent an opportunity to be heard where—
(a) a delay in determining the infringement proceedings is
likely to cause an irreparable harm to a proprietor; or
(b) there is a demonstrable risk of evidence being destroyed. (5) The respondent may, where the Court makes an order under
subsection (4), apply to the Court to be heard within fourteen days
of the date of an order for a provisional measure. (6) The Court may, after hearing the respondent under
subsection (5), confirm, modify or revoke an order for a provisional
measure. (7) The Court may, where a provisional measure is revoked
under subsection (6), on the request of the respondent, order a
proprietor to compensate that respondent for injury or loss caused
by an order for a provisional measure. PART VII
COLLECTIVE MARKS
76.

ndent, order a
proprietor to compensate that respondent for injury or loss caused
by an order for a provisional measure. PART VII
COLLECTIVE MARKS
76.

(1) Subject to this Part, the provisions relating to a trade
mark under this Act apply to a collective mark, with the necessary
modifications. (2) For the purposes of this Act, the use of a collective mark
by a member of a collective association shall be considered to be a
use of the collective mark by the collective association. 77. (1) A collective association shall apply to the Registrar for
the registration of a collective mark in a prescribed manner and
form on payment of a prescribed fee. (2) An application made under subsection (1) shall be
accompanied by the rules governing the use of a collective mark. (3) The rules referred to in subsection (2) shall specify—
(a) the conditions and requirements governing the use of
the collective mark; and
(b) any other matters as may be prescribed. Application
of Act to
collective
marks
Application
for
registration
of collective
mark

ollective mark; and
(b) any other matters as may be prescribed. Application
of Act to
collective
marks
Application
for
registration
of collective
mark

Trade Marks [No. 11 of 2023 227
(4) The Registrar shall, where the rules governing the use of
the collective mark do not comply with the requirements in subsection
(3), inform the applicant and give that applicant an opportunity to
comply with the conditions and requirements within a period that
the Registrar may determine. (5) The Registrar shall, where an applicant fails to comply
with subsections (3) and (4), reject an application for registration of
a collective mark. (6) The Registrar may determine that any other application for
registration of a trade mark that has been made under this Act be
registered as a collective mark as prescribed. 78. The rules governing the use of a registered collective mark
referred to in section 77 shall be open for inspection by members of
the public at the Agency during normal working hours on payment
of a prescribed fee. 79. (1) Subject to this Act, a proprietor may apply to the
Registrar to amend the rules governing the use of a collective mark,
in a prescribed manner and form on payment of a prescribed fee.

may apply to the
Registrar to amend the rules governing the use of a collective mark,
in a prescribed manner and form on payment of a prescribed fee.

(2) The Registrar may, before accepting an amendment to the
rules under subsection (1), publish the proposed amendments to the
rules in the Intellectual Property Journal. (3) The Registrar shall reject an application under subsection
(1) if the amendments do not comply with the requirements under
section 77. (4) The amended rules shall take effect on the date the
Registrar accepts the amendments and enters the amendments in
the Register. 80. A collective mark shall not be transferred or transmitted. 81. The Registrar may, in addition to the grounds for removal
of a trade mark from the Register under section 48, revoke the
registration of a collective mark on the ground that—
(a) the manner in which a collective mark is being used by
a proprietor is likely to mislead the public;
(b) a proprietor has failed to observe, or to secure the
observance of the rules governing the use of a collective
mark;
Inspection
of rules for
collective
mark
Amendment
of rules for
collective
mark
Non-transfer
or
transmission
of collective
mark
Grounds for
revocation of
registration
of collective
mark

mark
Amendment
of rules for
collective
mark
Non-transfer
or
transmission
of collective
mark
Grounds for
revocation of
registration
of collective
mark

228 No. 11 of 2023] Trade Marks
(c) a proprietor ceases to exist as an association; or
(d) it is not in the public interest for the collective mark to be
registered. 82. (1) Subject to any agreement to the contrary between a
member of a collective association and the proprietor, that member
of the collective association may, with the consent of the proprietor,
bring proceedings for infringement of a registered collective mark. (2) Where infringement proceedings are commenced by the
proprietor of a collective mark, the Court may, in determining the
matter—
(a) take into account any loss suffered or likely to be suffered
by an authorised user; and
(b) grant any other order the Court considers appropriate
to safeguard the interest of an authorised user. PART VIII
CERTIFICATION MARKS
83. (1) Subject to this Part, the provisions relating to a trade
mark under this Act, apply to a certification mark, with the necessary
modifications. (2) Despite subsection (1), sections 4 (2) (b) and 48 (1) (a) do
not apply to this Part. 84.

o a certification mark, with the necessary
modifications. (2) Despite subsection (1), sections 4 (2) (b) and 48 (1) (a) do
not apply to this Part. 84.

(1) A person responsible for the certification of a good or
service shall apply to the Registrar for the registration of a
certification mark in a prescribed manner and form on payment of
a prescribed fee. (2) An application made under subsection (1) shall be
accompanied by rules governing the use of the certification mark
which shall specify—
(a) the conditions and requirements governing the use of
the certification mark;
(b) the procedure for certification of a good or service by a
proprietor; and
(c) any other matter as may be prescribed. (3) The Registrar shall only register a certification mark where
the—
(a) rules governing the use of the certification mark comply
with subsection (2) and are not contrary to public policy
or to acceptable principles of morality; and
Infringement
proceedings
Application
of Act to
certification
marks
Application
for
registration
of
certification
mark

able principles of morality; and
Infringement
proceedings
Application
of Act to
certification
marks
Application
for
registration
of
certification
mark

Trade Marks [No. 11 of 2023 229
(b) applicant is competent to certify the good or service for
which the mark is to be registered. (4) The Registrar shall, where an applicant fails to comply
with subsection (3), reject an application for registration of a
certification mark. (5) The Registrar may determine that any other application
for registration of a trade mark that has been made under this Act
be registered as a certification mark as prescribed. 85. The rules governing the use of a registered certification
mark under section 84 shall be open for inspection by members of
the public at the Agency during normal working hours on payment
of the prescribed fee. 86. (1) Subject to this Act, a proprietor may apply to the
Registrar to amend the rules governing the use of a registered
certification mark in a prescribed manner and form on payment of
a prescribed fee. (2) The Registrar may, before accepting an amendment to the
rules under subsection (1), publish the proposed amendments to the
rules in the Intellectual Property Journal. (3) The Registrar shall reject an application under subsection
(1) if the amendments do not comply with the requirements under
section 84. 87.

ournal. (3) The Registrar shall reject an application under subsection
(1) if the amendments do not comply with the requirements under
section 84. 87.

The Registrar shall not register a certification mark if—
(a) an applicant carries on a business involving the supply
of a good or service which the applicant is required to
certify; or
(b) the mark is likely to mislead the public on the character
or significance of that mark. 88. (1) Despite section 56, a proprietor who intends to transfer
a registered certification mark shall apply to the Registrar for consent
to transfer a certification mark. (2) An application under subsection (1) shall be made in a
prescribed manner and form on payment of a prescribed fee. 89. (1) A proprietor may authorise a person to use a registered
certification mark to a good or service certified by the proprietor. Amendment
of rules for
certification
mark
Inspection
of rules for
certification
mark
Restriction
on
application
for
certification
Registrar’s
consent to
transfer
certification
mark
Authorised
use of
certification
mark

ertification
mark
Restriction
on
application
for
certification
Registrar’s
consent to
transfer
certification
mark
Authorised
use of
certification
mark

230 No. 11 of 2023] Trade Marks
(2) An authorised user has the right to use the certification
mark in accordance with the rules governing the use of the
certification mark under section 84. 90. An authorised user does not have the same rights as a
licensee under this Act in relation to an infringement of a certification
mark. 91.

tion 84. 90. An authorised user does not have the same rights as a
licensee under this Act in relation to an infringement of a certification
mark. 91.

(1) The following do not constitute an infringement of a
certification mark:
(a) the use of a certification mark in relation to a good or
service to which the registration of a certification mark
does not apply, subject to conditions or limitations entered
on the register;
(b) the use of a certification mark in relation to a good or
service certified by a proprietor if the proprietor, or
authorised user, has applied the certification mark and
has not subsequently removed or obliterated it, or the
proprietor has expressly or impliedly consented to the
use of the certification mark, except that this paragraph
does not apply if the application of a certification mark is
contrary to the rules governing the use of the certification
mark; and
(c) the use of a certification mark for a good or service
adapted to form part of, or to be an accessory to, another
good for which the certification mark is used without
infringement, if the use of that certification mark is
reasonably necessary in order to indicate that the good
or service is so adapted and the purpose or effect of the
use of the certification mark indicates that the good or
service is certified by a proprietor.

service is so adapted and the purpose or effect of the
use of the certification mark indicates that the good or
service is certified by a proprietor.

(2) Where a certification mark is one of two or more trade
marks registered under this Act that are identical or similar, the use
of any of those trade marks, shall not be considered to be an
infringement of the other trade marks. 92. (1) The Registrar may, on the Registrar’s own motion or
on an application made by a person with an interest in a certification
mark, cancel a certification mark on the ground that—
Rights of
authorised
user in
relation to
infringement
of
certification
mark
Acts not
constituting
infringement
of
certification
mark
Cancellation
of
registration
of
certification
mark

tion to
infringement
of
certification
mark
Acts not
constituting
infringement
of
certification
mark
Cancellation
of
registration
of
certification
mark

Trade Marks [No. 11 of 2023 231
(a) a proprietor is no longer competent to certify a good or
service in respect of which a certification mark is
registered;
(b) the manner in which a certification mark has been used
by a proprietor is likely to mislead the public;
(c) a proprietor has failed to observe or to secure the
observance of the rules governing the use of a
certification mark;
(d) it is no longer for the benefit of the public that the
certification mark remains registered; or
(e) a proprietor has amended the rules in a manner that the
rules—
(i) no longer comply with any of the conditions
or limitations imposed at the time of
registration of the certification mark; or
(ii) are contrary to public policy or to accepted
principles of morality. (2) An application under subsection (1) shall be made in the
prescribed manner and form on payment of the prescribed fee. (3) The Registrar shall, where the Registrar cancels a
certification mark under subsection (1), notify the proprietor and
the person with interest in the certification mark who applied for
the cancellation of a certification mark in writing, of the decision
stating the reason for the decision. 93.

n the certification mark who applied for
the cancellation of a certification mark in writing, of the decision
stating the reason for the decision. 93.

(1) The Registrar may, on the Registrar’s own motion or
on an application made by a person with an interest in a certification
mark, vary the rules relating to a certification mark where it is in the
best interest of the public that the rules be varied if a certification
mark is to remain registered. (2) An application under subsection (1) shall be made in a
prescribed manner and form on payment of a prescribed fee. (3) The Registrar shall, where the Registrar varies the rules
under subsection (1), notify, the proprietor of the certification mark
and the person with an interest in the certification mark who applied
for the variation of rules, in writing, of the decision stating the reason
for the decision. 94. (1) Subject to an agreement between the authorised user
and the proprietor, the authorised user may, with the consent of the
proprietor, bring proceedings for infringement of a registered
certification mark. Variation of
rules
governing
certification
mark
Infringement
proceedings
of
certification
mark

gs for infringement of a registered
certification mark. Variation of
rules
governing
certification
mark
Infringement
proceedings
of
certification
mark

232 No. 11 of 2023] Trade Marks
(2) Where infringement proceedings are commenced by the
proprietor of a certification mark, the Court may, in determining
the matter—
(a) take into account loss suffered or likely to be suffered
by an authorised user; and
(b) grant any other order the Court considers appropriate
to safeguard the interest of an authorised user. PART IX
GEOGRAPHICAL INDICATIONS
95. A geographical indication shall only be protected if that
geographical indication is registered under this Act. 96.

RT IX
GEOGRAPHICAL INDICATIONS
95. A geographical indication shall only be protected if that
geographical indication is registered under this Act. 96.

A geographical indication shall not be protected under this
Act if that geographical indication—
(a) designates a good where the given quality, reputation
or other characteristic of that good is not essentially
attributable to the geographical origin of the good;
(b) is a generic name or a name that is generally used in the
trading of that good;
(c) is contrary to public policy or accepted principles of
morality;
(d) is not protected or has ceased to be protected in the
country of origin;
(e) has become a common name of a good and is being
used to designate the the kind, quality, variety or other
property or characteristic of that good; or
(f) although true as to the geographical origin of the good,
may falsely represent to the public that the good originates
in another geographical area. 97. (1) A producer carrying on an activity in a specified
geographical area, or competent authority responsible for a
geographical indication, may apply to the Registrar for the registration
of a geographical indication in a prescribed manner and form on
payment of a prescribed fee.

dication, may apply to the Registrar for the registration
of a geographical indication in a prescribed manner and form on
payment of a prescribed fee.

Protection of
registered
geographical
indication
Geographical
indication
excluded
from
protection
Application
for
registration
of
geographical
indication

tection of
registered
geographical
indication
Geographical
indication
excluded
from
protection
Application
for
registration
of
geographical
indication

Trade Marks [No. 11 of 2023 233
(2) Where an applicant is not ordinarily resident in the Republic
or the principal place of business is outside the Republic, an
application for the registration of a geographical indication shall be
made by a trade mark agent. 98. (1) Subject to section 96 (f), a homonymous geographical
indication that relates to a wine shall be accorded protection
independently. (2) The Minister may, by statutory instrument, make Regulations
for the criteria of differentiating homonymous geographical
indications to which subsection (1) applies. (3) The Regulations made under subsection (2) shall provide
for—
(a) an equitable treatment of a producer in a geographical
area; and
(b) mechanisms to ensure that a consumer is not misled as
to the geographical indication. (4) For the purposes of this section, “homonymous geographical
indications” means identical or misleading similar words that are
used for identifying different wines with—
(a) the same pronunciation and spelling;
(b) the same pronunciation but different spelling; or
(c) different pronunciation but same spelling. 99.

ith—
(a) the same pronunciation and spelling;
(b) the same pronunciation but different spelling; or
(c) different pronunciation but same spelling. 99.

(1) The Registrar shall examine an application for a
geographical indication filed under section 97 to determine whether
or not that application complies with the requirements of this Act. (2) The Registrar shall, where the Registrar determines that
an application does not comply with the requirements of this Act,
notify an applicant, in writing, to make the relevant amendment to
an application within the period specified in the notice. (3) An amendment referred to in subsection (2) shall be made
in a prescribed manner and form on payment of a prescribed fee. (4) The Registrar shall, where an applicant fails to make the
relevant amendment within the specified period under subsection
(2), reject an application and notify the applicant, in writing, of the
decision. (5) The Registrar shall, where the Registrar is satisfied that an
application under subsection (1) complies with the requirements of
this Act, accept the application filed under section 97. Homonymous
geographical
indication
for wines
Examination
of application
and
publication of
acceptance of
geographical
indication

led under section 97. Homonymous
geographical
indication
for wines
Examination
of application
and
publication of
acceptance of
geographical
indication

234 No. 11 of 2023] Trade Marks
(6) An applicant shall publish the acceptance of an application
for a geographical indication under this section in the Intellectual
Property Journal on payment of a prescribed fee. 100. (1) A person may, within a prescribed period and manner,
file with the Registrar a notice of opposition to the registration of a
geographical indication on the ground that it does not comply with
the requirements of this Act. (2) Sections 19, 20, 21, 22 and 23 apply, with the necessary
modifications, to an opposition filed under this section. 101.

requirements of this Act. (2) Sections 19, 20, 21, 22 and 23 apply, with the necessary
modifications, to an opposition filed under this section. 101.

(1) The Registrar shall register a geographical indication
and issue a certificate of registration to the applicant in a prescribed
manner and form on payment of a prescribed fee, where the
Registrar is satisfied that the applicant has complied with the
requirements of this Act and that there is—
(a) no opposition to the registration of a geographical
indication within the prescribed period; or
(b) an opposition to the registration of a geographical
indication and the opposition has been—
(i) decided in favour of the person who has applied
for the registration of geographical indication;
or
(ii) withdrawn by the person who filed a notice of
opposition. (2) The Registrar shall publish a notice of the registration of a
geographical indication in the Intellectual Property Journal. (3) The Registrar may reject an application for the registration
of a geographical indication if the application does not comply with
the requirements of this Act. (4) The Registrar shall, where the Registrar rejects an
application for the registration of a geographical indication under
subsection (3), notify the applicant, in writing, of the decision and
the reasons for the rejection. 102.

istration of a geographical indication under
subsection (3), notify the applicant, in writing, of the decision and
the reasons for the rejection. 102.

A producer carrying on an activity in a geographical area
where a certificate of registration has been issued for that
geographical indication has the right, in the course of trade, to use a
registered geographical indication in relation to a good specified if
that good possesses the quality, reputation or other characteristic
specified in the Register. Opposition
to
registration
Registration
of
geographical
indication
Right to use

quality, reputation or other characteristic
specified in the Register. Opposition
to
registration
Registration
of
geographical
indication
Right to use

Trade Marks [No. 11 of 2023 235
103. Subject to this Act, a registered geographical indication
shall be valid for a period of ten years from the date of filing of an
application for registration of a geographical indication and may be
renewed, in a prescribed manner and form on payment of a
prescribed fee, for each subsequent period of ten years from the
date of expiry. 104. (1) A person shall not use a geographical indication that is
identical with, or similar to, a registered geographical indication for
designating—
(a) a good where that person is not the producer of that
good specified in the Register;
(b) a good that lacks the quality, reputation or any other
characteristic specified in the Register;
(c) a good that is not specified in the Register but that is of
the same kind as a specified good; or
(d) another good where the use of the geographical indication
constitutes the use of the reputation of a registered
geographical indication in bad faith. (2) A person shall not use misleading information, in advertising
materials or relevant documents relating to a good, about the origin,
nature or basic characteristic of a good on the inner or outer
packaging of a good.

erials or relevant documents relating to a good, about the origin,
nature or basic characteristic of a good on the inner or outer
packaging of a good.

(3) The prohibitions under subsections (1) and (2) do not extend
to the use, in the course of trade, of a person’s trade name, except
where the trade name is used in a manner that misleads the public. (4) A person who contravenes subsections (1) and (2) commits
an offence and is liable, on conviction, to a fine not exceeding one
million penalty units. (5) Despite subsection (4), a user of a registered geographical
indication or a competent authority may commence civil proceedings
to restrain a person from unlawfully using a registered geographical
indication. 105. (1) An authorised officer may seize a good that is in the
process of being imported or exported if that good unlawfully bears
a registered geographical indication. (2) A seizure under subsection (1) shall be undertaken in
accordance with the Customs and Excise Act. Validity and
renewal of
registered
geographical
indication
Unlawful
use of
geographical
indication
Seizure in
case of
unlawful
marking with
geographical
indication
Cap. 322

f
registered
geographical
indication
Unlawful
use of
geographical
indication
Seizure in
case of
unlawful
marking with
geographical
indication
Cap. 322

236 No. 11 of 2023] Trade Marks
106. (1) A proprietor who intends to transfer a registered
geographical indication to another person may apply to the Registrar
for the transfer of that registered geographical indication in the
prescribed manner and form on payment of a prescribed fee. (2) The Registrar shall, within a prescribed period, reject or
approve an application under subsection (1), and notify the applicant
of the decision. (3) The Registrar shall reject an application under subsection (1)
if the person to whom a registered geographical indication is to be
transferred—
(a) is not entitled to file an application for registration of a
geographical indication under section 97; or
(b) does not consent to the transfer. (4) A decision to reject an application under subsection (3)
shall be in writing and shall state the reasons for the rejection. (5) The Registrar shall, where the Registrar approves an
application under subsection (2), issue a certificate of registration
in a prescribed form to the transferee. 107.

ll, where the Registrar approves an
application under subsection (2), issue a certificate of registration
in a prescribed form to the transferee. 107.

(1) Nothing in this Act prevents the continued and similar
use in the Republic of a particular geographical indication of another
country identifying a wine or spirit, or in connection with a good or
service by a person in the Republic who has used that geographical
indication in a continuous manner with regard to the same or related
good or service in the Republic either—
(a) for a period of at least ten years immediately preceding
the date on which the TRIPS Agreement was signed; or
(b) in good faith at any time preceding the date on which
the TRIPS Agreement was signed. (2) This Act does not prejudice the registrability, or validity, of
the registration of a trade mark, or the right to use a trade mark, on
the basis that the trade mark is identical with or similar to a
geographical indication, in the case of a person who applied for the
registration of a trade mark or who registered a trade mark in good
faith or who acquired rights through use in good faith—
(a) before the date of entry into force or commencement
of this Act; or
(b) before the geographical indication is protected in the
geographical indication’s country of origin.

try into force or commencement
of this Act; or
(b) before the geographical indication is protected in the
geographical indication’s country of origin.

Transfer of
registered
geographical
indication
Exemptions
regarding
prior and
other users

Transfer of
registered
geographical
indication
Exemptions
regarding
prior and
other users

Trade Marks [No. 11 of 2023 237
(3) A request for relief made in accordance with this Act relating
to the use or registration of a trade mark shall be commenced within
five years after the adverse use of the protected geographical
indication has become generally known in the Republic, or after
the date of registration of a trade mark in the Republic. (4) Subsection (3) does not apply where—
(a) a trade mark has been published on the date of
registration of the trade mark in the Republic where that
date is earlier than the date on which the adverse use
became generally known in the Republic; and
(b) a geographical indication is not used or registered in bad
faith. (5) This Act does not affect or prejudice the right of a person
to use, in the course of trade, that person’s name or the name of
that person’s successor in title in business, except where that name
is used in a manner that is likely to mislead the public. 108. (1) The Registrar may, on the Registrar’s own motion,
cancel a geographical indication from the Register, where a
proprietor fails to comply with conditions and limitations attached to
the geographical indication’s registration or renewal.

om the Register, where a
proprietor fails to comply with conditions and limitations attached to
the geographical indication’s registration or renewal.

(2) The Registrar may, on an application by a person with an
interest in a geographical indication made in a prescribed manner
and form on payment of a prescribed fee, cancel the registration of
a geographical indication on the ground that the—
(a) area specified in the registration does not correspond to
a geographical indication;
(b) indication in respect of which a good is intended to apply
or the indication of the quality, reputation or other
characteristic of a good is missing, or unsatisfactory; or
(c) indication does not comply with this Act. (3) The Registrar shall, where the Registrar cancels a
registration of a geographical indication under subsection (2), notify
the proprietor of a geographical indication and the person with an
interest in the geographical indication who applied for cancellation
of a geographical indication, in writing, of the decision stating the
reasons for the decision. Cancellation of
registration of
geographical
indication

f a geographical indication, in writing, of the decision stating the
reasons for the decision. Cancellation of
registration of
geographical
indication

238 No. 11 of 2023] Trade Marks
PART X
BORDER MEASURES
109. (1) Where a proprietor or licensee has valid grounds for
suspecting that the importation or exportation of counterfeit trade
mark goods may take place, that proprietor or licensee may apply,
by notice, for border measures to the Commissioner-General in a
prescribed manner and form . (2) A notice under subsection (1) does not apply to goods in
transit. (3) The Commissioner-General shall, on receipt of the notice
made under subsection (1), in writing, request the Registrar to verify
whether—
(a) the person submitting the notice is the registered
proprietor or licensee of the trade mark in respect of the
counterfeit good; and
(b) the trade mark is valid. (4) The Registrar shall, on receipt of the notice under subsection
(3), conduct a search of the Register and submit a report to the
Commissioner-General within the prescribed period.

ipt of the notice under subsection
(3), conduct a search of the Register and submit a report to the
Commissioner-General within the prescribed period.

(5) The Commissioner-General shall, on the Registrar’s written
verification of the information under subsection (3)—
(a) inform the applicant in writing within the prescribed
period—
(i) that the application for border measures has been
approved; and
(ii) the period for which the commissioner-General
shall enforce the notice;
(b) direct an authorised officer to seize and detain the goods
specified in the notice in a secure place if the proprietor
or licensee deposits with the Commissioner-General
security as the Commissioner-General may determine
to—
(i) reimburse the Government for liability or
expenses the Government is likely to incur as a
result of the seizure of those goods;
(ii) prevent abuse and protect the importer or
exporter; or
(iii) pay compensation that may be ordered by the
Court under this Part; or
(c) take appropriate action to prevent a person from
importing or exporting goods identified in the notice. Notice for
border
measures

r this Part; or
(c) take appropriate action to prevent a person from
importing or exporting goods identified in the notice. Notice for
border
measures

(6) The Commissioner-General shall, within seven days from
the date of the seizure and detention of the infringing goods under
subsection (5), issue to the applicant and the importer or exporter, a
notice of suspension of the release of the goods in a prescribed
manner and form. (7) A proprietor or licensee may, for purposes of this section,
commence infringement proceedings under section 69 within ten
days of receipt of the notice issued under subsection (6). 110. An authorised officer who seizes and detains goods under
section 109 shall, within seven days of the seizure and detention of
the goods, give a notice of the seizure in a prescribed manner and
form to the Registrar, a proprietor, licensee and importer or exporter. 111. (1) The Commissioner-General may, on an application by
a proprietor, licensee, importer or exporter, made in a prescribed
manner and form, authorise the inspection by the proprietor, licensee,
importer or exporter of seized and detained goods. (2) The Commissioner-General may permit a proprietor,
licensee, importer or exporter to remove a sample of seized and
detained goods.

detained goods. (2) The Commissioner-General may permit a proprietor,
licensee, importer or exporter to remove a sample of seized and
detained goods.

(3) Where the Commissioner-General permits the inspection
or removal of a sample of seized and detained goods under this
section, the Commissioner-General shall not be liable to the importer
or exporter for any loss or damage suffered by the importer or
exporter arising out of—
(a) damage to seized and detained goods incurred during the
inspection; or
(b) anything done to the sample of seized and detained goods
removed from the custody of the Commissioner-General. 112. (1) An importer or exporter may, where infringement
proceedings have not commenced, in accordance with section 109
(7) and before the expiry of ninety days, admit to the infringement
of a trade mark, and consent to the forfeiture of seized goods in a
prescribed manner and form. (2) Where an importer or exporter has made an admission and
given consent under subsection (1), the Commissioner-General shall
order the destruction or disposal of seized goods outside the channels
of commerce. (3) Where seized goods are destroyed or disposed of under
subsection (2), compensation is not payable to the importer or
exporter for any loss relating to the destruction or disposal of those
goods. Trade Marks [No.

ion (2), compensation is not payable to the importer or
exporter for any loss relating to the destruction or disposal of those
goods. Trade Marks [No.

11 of 2023 239
Notice of
seizure
Inspection
and release
of seized
goods
Forfeiture
of seized
goods by
consent

11 of 2023 239
Notice of
seizure
Inspection
and release
of seized
goods
Forfeiture
of seized
goods by
consent

240 No. 11 of 2023] Trade Marks
113. An importer or exporter of seized and detained goods
may apply to the Court for the release of the seized and detained
goods and compensation for the loss or damage relating to the seizure
and detention of the goods, where the proprietor or registered
licensee—
(a) does not commence proceedings for infringement within
the period specified in section 109 (7); and
(b) had no reasonable grounds for submitting a notice under
section 109 (1). PART XI
TRADE MARK AGENTS
114. (1) A person shall not practice as a trade mark agent,
impersonate or use the title of a trade mark agent unless that person
is registered as a trade mark agent under this Act. (2) A person who contravenes subsection (1) commits an
offence and is liable, on conviction, to a fine not exceeding seven
hundred thousand penalty units or to imprisonment for a term not
exceeding seven years, or to both. 115. (1) A person shall not set up a business as trade mark
agent unless that person is registered under this Act.

exceeding seven years, or to both. 115. (1) A person shall not set up a business as trade mark
agent unless that person is registered under this Act.

(2) A person who contravenes subsection (1) commits an
offence and is liable, on conviction, to a fine not exceeding five
hundred thousand penalty units or to imprisonment for a term not
exceeding five years, or to both. 116. (1) A person who intends to be registered as a trade mark
agent may apply to the Registrar in a prescribed manner and form
on payment of a prescribed fee. (2) A person is eligible to be registered as a trade mark agent if
that person has been practising as a legal practitioner for a period
of at least five years. (3) Despite subsection (2), a person who has passed a qualifying
examination approved by the Registrar as prescribed, is eligible to
be registered as a trade mark agent. (4) A person is not eligible to be registered as a trade mark
agent if that person is—
(a) not a citizen or holder of a residence permit;
(b) legally disqualified;
(c) less than twenty one years of age;
Release of
seized goods
and
compensation
to importer
Holding out
as trade mark
agent
Prohibition
of
establishment
of business
without
registration
Registration
as trade
mark agent

ompensation
to importer
Holding out
as trade mark
agent
Prohibition
of
establishment
of business
without
registration
Registration
as trade
mark agent

Trade Marks [No. 11 of 2023 241
(d) an undischarged bankrupt;
(e) a body corporate; or
(f) not domiciled in the Republic. (5) The Registrar shall register a person who qualifies to be
registered as a trade mark agent and issue that person with a trade
mark agent’s notification, as prescribed. (6) The registration of a trade mark agent under subsection (5)
shall be valid for a period of one year from the date of registration
and shall be subject to renewal. (7) For purposes of subsection (4)—
“citizen” has the meaning assigned to the word in the
Constitution; and
“residence permit” has the meaning assigned to the words
in the Immigration and Deportation Act, 2010. 117. A trade mark agent may apply to the Registrar for renewal
of a trade mark agent’s certificate in a prescribed manner and form
on payment of a prescribed fee. 118. (1) Subject to this Act, a trade mark agent may—
(a) act as an agent on behalf of an applicant in connection
with an application for registration of a trade mark under
this Act; or
(b) act as an agent on behalf of a proprietor or licensee in
connection with any matter or proceedings before the
Registrar. 119.

k under
this Act; or
(b) act as an agent on behalf of a proprietor or licensee in
connection with any matter or proceedings before the
Registrar. 119.

The Registrar shall maintain a register of trade mark agents
which shall contain particulars of trade mark agents, as prescribed. 120. (1) The Registrar shall cancel a trade mark agent’s
certificate if the trade mark agent—
(a) does not comply with the terms and conditions under
which the certificate was issued;
(b) becomes legally disqualified;
(c) becomes bankrupt;
(d) obtained the certificate through fraud, misrepresentation
or concealment of a material fact;
Renewal of
trade mark
agent’s
certificate
Act No.18
of 2010
Cap.1
Functions
of trade
mark agent
Register of
trade mark
agents
Cancellation
of trade
mark
agent’s
certificate

agent’s
certificate
Act No.18
of 2010
Cap.1
Functions
of trade
mark agent
Register of
trade mark
agents
Cancellation
of trade
mark
agent’s
certificate

242 No. 11 of 2023] Trade Marks
(e) in case of a legal practitioner, is no longer entitled to
practice as a legal practitioner;
(f) is convicted of fraud, forgery or uttering a forged
document; or
(g) commits an offence under this Act. (2) Despite subsection (1), a trade mark agent may apply to
the Registrar for the cancellation of the trade mark agent’s certificate
in a prescribed manner and form on payment of a prescribed fee. 121. A trade mark agent may apply to the Registrar, in a
prescribed manner and form on payment of a prescribed fee, for
restoration of a trade mark agent’s certificate cancelled under
section 120. PART XII
OFFENCES
122.

anner and form on payment of a prescribed fee, for
restoration of a trade mark agent’s certificate cancelled under
section 120. PART XII
OFFENCES
122.

(1) A person commits an offence if that person
knowingly—
(a) has in possession or control in the course of trade a
counterfeit trade mark good;
(b) manufactures, produces or makes in the course of trade
a counterfeit trade mark good;
(c) sells, hires out, barters, or offers or exposes for sale,
hiring out, or donates a counterfeit trade mark good;
(d) exposes or exhibits for the purposes of trade a counterfeit
trade mark good;
(e) distributes a counterfeit trade mark good for the purposes
of trade;
(f) imports into or exports from the Republic a counterfeit
trade mark good; or
(g) disposes of a counterfeit trade mark good in any manner
in the course of trade. (2) A person convicted of an offence under subsection (1) is
liable to a fine not exceeding five hundred thousand penalty units or
to imprisonment for a term not exceeding five years, or to both. (3) A body corporate that contravenes subsection (1) is liable
to a fine not exceeding three million penalty units. Restoration
of trade
mark agent’s
certificate
Counterfeiting
trade mark

subsection (1) is liable
to a fine not exceeding three million penalty units. Restoration
of trade
mark agent’s
certificate
Counterfeiting
trade mark

Trade Marks [No. 11 of 2023 243
123. (1) A person commits an offence if that person with intent
to benefit that person or another, or cause loss to a proprietor or
licensee, and without the consent of the proprietor or licensee—
(a) applies to a good or packaging of a good a mark identical
to, or likely to be mistaken for, a registered trade mark;
or
(b) applies a mark identical to, or likely to be mistaken for, a
registered trade mark to material intended to be used—
(i) for labelling or packaging a good;
(ii) as a business paper in relation to a good; or
(iii) for advertising a good. (2) A person convicted of an offence under subsection (1) is
liable to a fine not exceeding three hundred thousand penalty units
or to a term of imprisonment not exceeding three years, or to both. (3) A body corporate that contravenes subsection (1) is liable
to a fine not exceeding three million penalty units. 124. (1) A person commits an offence if that person
knowingly—
(a) makes an infringing article; or
(b) has in that person’s possession, custody or control an
infringing article.

n offence if that person
knowingly—
(a) makes an infringing article; or
(b) has in that person’s possession, custody or control an
infringing article.

(2) A person convicted of an offence under subsection (1) is
liable to a fine not exceeding three hundred thousand penalty units
or imprisonment for a term not exceeding three years, or to both. (3) A body corporate that contravenes subsection (1) is liable
to a fine not exceeding three million penalty units. 125. (1) A person commits an offence if that person sells or
offers for sale, imports, or has in that person’s possession, for the
purpose of trade or manufacture, a good to which a registered trade
mark is falsely applied. (2) It shall be a defence for an offence under this section if a
person proves that the person had—
(a) taken all reasonable precautions against committing an
offence under this section;
(b) at the time of the commission of an alleged offence, no
reason to suspect that a registered trade mark was falsely
applied to a good; or
(c) acted innocently. Falsely
applying a
registered
trade mark
to good or
service
Making or
possessing
of infringing
article
Importing
or selling
goods with
falsely
applied
trade mark

lying a
registered
trade mark
to good or
service
Making or
possessing
of infringing
article
Importing
or selling
goods with
falsely
applied
trade mark

244 No. 11 of 2023] Trade Marks
(3) A person convicted of an offence under subsection (1) is
liable to a fine not exceeding five hundred thousand penalty units or
imprisonment for a term of not exceeding five years, or to both. (4) A body corporate that contravenes subsection (1) is liable
to a fine not exceeding three million penalty units. 126. (1) A person shall not without the consent of the
proprietor—
(a) make a reproduction, replica or representation of a
registered trade mark; or
(b) import a reproduction, replica or representation of a
registered trade mark. (2) A person convicted of an offence under subsection (1) is
liable to a fine not exceeding three hundred thousand penalty units
or to imprisonment for a term not exceeding three years, or to both. (3) A body corporate that contravenes subsection (1) is liable
to a fine not exceeding three million penalty units. 127.

ding three years, or to both. (3) A body corporate that contravenes subsection (1) is liable
to a fine not exceeding three million penalty units. 127.

(1) A person commits an offence if that person makes or
causes to be made a false entry in the Register or register of trade
mark agents, or a document purporting to be a copy of an entry in
the Register or register of trade mark agents, or produces, tenders
or causes to be produced or tendered in evidence a document,
knowing the entry or document to be false. (2) A person convicted of an offence under subsection (1) is
liable to a fine not exceeding two hundred thousand penalty units or
to imprisonment for a term not exceeding two years, or to both. 128. A person who alters or defaces a document issued by the
Registrar commits an offence and is liable, on conviction, to a fine
not exceeding three hundred thousand penalty units or to
imprisonment for a term not exceeding three years, or to both. 129. (1) A person commits an offence if that person, for the
purpose of deceiving the Registrar or an officer of the Agency in
the execution of this Act, makes or submits a false statement or
representation whether orally or in writing, knowing that statement
or representation to be false.

of this Act, makes or submits a false statement or
representation whether orally or in writing, knowing that statement
or representation to be false.

(2) A person commits an offence if that person makes a
statement or representation whether orally or in writing, for the
purpose of procuring or influencing the doing or omission of anything
in relation to this Act, and who on becoming aware that such
statement or representation was false, fails to inform the Registrar
of the falsity. Unauthorised
reproduction
of registered
trade mark
Falsification
of entries in
Register
Altering of
documents
Deceiving
Registrar or
officer with
false
statement

d
reproduction
of registered
trade mark
Falsification
of entries in
Register
Altering of
documents
Deceiving
Registrar or
officer with
false
statement

Trade Marks [No. 11 of 2023 245
(3) A person convicted of an offence under subsection (1) or
(2) is liable to a fine not exceeding two hundred thousand penalty
units or to imprisonment for a term not exceeding two years, or to
both. 130. (1) A person commits an offence if that person—
(a) places on a document, as a description of that person’s
office or business, the words “trade marks office”, or
words of similar nature whether alone or together with
other words;
(b) impersonates or falsely purports to be an employee or
agent of the Agency; or
(c) uses a word or acts in a manner, that would reasonably
lead a person to believe that, that person’s office is
officially connected with the Agency. (2) A person convicted of an offence under subsection (1) is
liable to a fine not exceeding two hundred thousand penalty units or
to imprisonment for a term not exceeding two years, or to both. 131.

ction (1) is
liable to a fine not exceeding two hundred thousand penalty units or
to imprisonment for a term not exceeding two years, or to both. 131.

A person commits an offence if that person—
(a) provides false information in an application for a
registration made in accordance with this Act;
(b) after having been sworn, wilfully gives false evidence
before the Registrar knowing the evidence to be false;
or
(c) aids, abets, counsels or procures the commission of an
offence or is in any way directly or indirectly a party to
the commission of an offence under this Act. (2) A person convicted of an offence under subsection (1) is
liable to a fine not exceeding three hundred thousand penalty units
or to imprisonment for a term not exceeding three years, or to both. 132. (1) An authorised officer may arrest, without a warrant,
a person who—
(a) sells or offers for sale a good or service to which a
registered trade mark is falsely applied;
(b) has, or is reasonably suspected of having, in that person’s
possession, for the purpose of trade or manufacture, a
good to which a registered trade mark is falsely applied;
or
(c) deals in a counterfeit trade mark good in a manner
prohibited under section 122 (1). False
representation
about
Agency
General
offences
Arrests and
inspections

a counterfeit trade mark good in a manner
prohibited under section 122 (1). False
representation
about
Agency
General
offences
Arrests and
inspections

246 No. 11 of 2023] Trade Marks
(2) An authorised officer who makes an arrest under subsection
(1) shall, without undue delay, have the person arrested brought to a
police station. (3) An authorised officer may, with a warrant, at any reasonable
time—
(a) enter and search any premises or private dwelling where
that authorised officer has reasonable cause for
suspecting that there is a—
(i) good that is the subject of an offence under this
Part;
(ii) material or article that is being, or has been, used
in the commission of an offence under this Part;
or
(iii) document that evidences that an offence has
been committed under this Part; and
(b) seize and detain a good, material, article or document
found at the premises or private dwelling connected with
the commission of an offence under this Part. (4) An authorised officer who seizes and detains a good,
material, article or document under subsection (3) shall, within sixty
days of the seizure and detention, commence or cause to be
commenced criminal proceedings against the person alleged to have
committed an offence under this Part.

seizure and detention, commence or cause to be
commenced criminal proceedings against the person alleged to have
committed an offence under this Part.

(5) An authorised officer shall return a seized and detained
good, material, article or document to the person in whose possession
that good, material, article or document was at the time of seizure
and detention if criminal proceedings are not commenced within
the period specified in subsection (4). (6) Where it is not reasonably practicable to return a seized
and detained good, material, article or document, the seized and
detained good, material, article or document shall be dealt with in
accordance with any written law relating to the detention and
disposal of seized and detained property.

al, article or document shall be dealt with in
accordance with any written law relating to the detention and
disposal of seized and detained property.

Trade Marks [No. 11 of 2023 247
PART XIII
GENERAL PROVISIONS
133. (1) The Agency shall keep and maintain a Register of trade
marks and geographical indications in which the Registrar shall enter
the following information:
(a) particulars of a registered trade mark and geographical
indication, including conditions and limitation imposed at
the time of registration of the trade mark and geographical
indication;
(b) particulars of any transaction required to be registered
under this Act; or
(c) any other matter relating to a trade mark or geographical
indication as the Minister may prescribe. (2) The Register under subsection (1) shall be maintained in
electronic and non-electronic form. (3) Subject to this Act, the Register shall be kept in the custody
of the Registrar at the offices of the Agency and shall be open for
inspection to the public during normal office hours, on payment of a
prescribed fee. 134.

Registrar at the offices of the Agency and shall be open for
inspection to the public during normal office hours, on payment of a
prescribed fee. 134.

(1) A certificate purporting to be signed by the Registrar
and certifying that an entry, which the Registrar is authorised in
accordance with this Act to make, has, or has not, been made or
that any other thing which the Registrar is authorised to do, has, or
has not, been done, shall be prima facie evidence of the matter so
certified. (2) A copy of an entry or a document or an extract from the
Register or register of trade mark agents certified by the Registrar
shall be admitted in evidence without further proof and without
production of the original. (3) The Registrar may, on an application by a person, issue to
that person a certified extract from, or a copy of, an entry in the
Register or register of trade mark agents on payment of a prescribed
fee. 135. (1) The Registrar may, on an application by a proprietor
in the prescribed manner and form, on payment of a prescribed fee,
rectify the Register by—
(a) correcting an error in the name, address or description
of a proprietor;
Register of
trade marks
and
geographical
indications
Evidence of
certain
entries and
documents
Rectification
of Register

description
of a proprietor;
Register of
trade marks
and
geographical
indications
Evidence of
certain
entries and
documents
Rectification
of Register

248 No. 11 of 2023] Trade Marks
(b) entering a change in the name, address or description of
a proprietor;
(c) striking out a good from those in respect of which a
trade mark is registered; or
(d) entering a disclaimer or statement relating to a registered
trade mark. (2) Despite subsection (1), the Registrar may, on the Registrar’s
own motion rectify an error or omission without an application under
subsection (1), and shall give notice to a proprietor affected by the
rectification. (3) The Registrar shall not effect a rectification in respect of a
matter that affects the validity of a registration of a trade mark. 136. (1) The Registrar may, on application by a proprietor in
the prescribed manner and form on payment of a prescribed fee,
amend the Register by adapting the designation of a good or service
in respect of which a trade mark is registered to conform to a change
that has occurred in the classification of a good or service. (2) The Registrar may, where there is a change in the
classification of a good or service, request a proprietor to file an
application for an amendment within a specified period.

there is a change in the
classification of a good or service, request a proprietor to file an
application for an amendment within a specified period.

(3) The Registrar may cancel or refuse to renew a registration
of a trade mark where a proprietor fails to comply with the request
by the Registrar under subsection (2). 137. The Registrar shall, at intervals as prescribed, publish in
the Intellectual Property Journal particulars required to be published
under this Act and other information relating to a trade mark and
geographical indication that the Registrar considers appropriate. 138. (1) The Registrar may authorise the correction of a clerical
error in a document filed with the Agency on request by an applicant
in the prescribed manner and form on payment of the prescribed
fee. (2) The Registrar shall, where an error in a document filed
with the Agency is identified by the Registrar, notify an applicant, in
writing, to correct the clerical error in a prescribed manner and
form on payment of a prescribed fee. 139. (1) Despite any other written law, the Registrar shall
serve a document under this Act, in the case of—
(a) a company, by delivery of the document to—
Amendment
of Register
for
adaptation
of
classification
Intellectual
Property
Journal
Correction
of error in
document
Service of
documents
by Registrar

Amendment
of Register
for
adaptation
of
classification
Intellectual
Property
Journal
Correction
of error in
document
Service of
documents
by Registrar

Trade Marks [No. 11 of 2023 249
(i) the registered office of the company; or
(ii) an agent of the company; or
(b) an individual, by personally serving the individual or agent
of that individual. (2) Where service in the manner specified under subsection
(1) is not practicable or expedient, a document may be served by—
(a) registered mail or electronic mail; or
(b) publication in a daily newspaper of general circulation in
the Republic. (3) Where a document is sent by electronic means, service is
considered to be effected when the complete data message enters
an information system designated or used for that purpose in
accordance with the Electronic Communications and Transactions
Act, 2021. 140. (1) An application, notice or document required to be filed
with, or served on, the Registrar shall be filed or served in accordance
with this Act. (2) Where a document is filed or served by electronic means,
the document is considered to be filed or served when the complete
data message enters an information system designated or used for
that purpose in accordance with the Electronic Communications
and Transactions Act, 2021. 141.

age enters an information system designated or used for
that purpose in accordance with the Electronic Communications
and Transactions Act, 2021. 141.

(1) The Registrar may, on an application made by a person
who intends to register a trade mark, give advice or issue a report
as to whether the trade mark may be registered under this Act in
the prescribed manner and on payment of a prescribed fee. (2) The Registrar’s advice given under subsection (1) shall not
be binding on the Registrar as to the registrability of a trade mark. 142. Subject to this Act, the Registrar shall, on a request by a
person in the prescribed manner and form, on payment of a
prescribed fee, furnish copies of a document that is open to public
inspection and required to be maintained in accordance with this
Act. 143. (1) The Registrar may, in any proceedings under this Act—
(a) summon a witness;
(b) receive written or oral evidence, on oath or affirmation;
(c) require the production of a document, good, material or
article for inspection;
Act No. 4
of 2021
Filing and
service of
documents
on Registrar
Act No. 4
of 2021
Preliminary
advice and
search
Request for
information
Powers of
Registrar in
proceedings

iling and
service of
documents
on Registrar
Act No. 4
of 2021
Preliminary
advice and
search
Request for
information
Powers of
Registrar in
proceedings

250 No. 11 of 2023] Trade Marks
(d) provide for the manner of inspection of a document, good,
material or article;
(e) hear the matter in issue and rely on the evidence of any
expert that the Registrar considers necessary to consult;
(f) allow a witness to be cross examined on oral evidence
or evidence adduced in an affidavit or solemn declaration;
(g) in the case of a party to the proceedings who is resident
outside the Republic, order that party to give security for
costs of the proceedings within a period that the Registrar
may direct;
(h) award, to a party, costs as the Registrar may consider
reasonable and direct how the costs are to be paid, and
the costs awarded shall be taxed by the Court and the
payment of the costs may be enforced in the same
manner as if the costs were awarded by the Court; or
(i) exercise any other power as the Registrar considers
appropriate for the performance of the Registrar’s
functions under this Act. (2) The Registrar may make an order as the Registrar considers
appropriate regarding any matter under subsection (1). 144. The Registrar is not bound by the rules of evidence in
any proceedings under this Act. 145.

ppropriate regarding any matter under subsection (1). 144. The Registrar is not bound by the rules of evidence in
any proceedings under this Act. 145.

The Registrar may determine the time and place at which
proceedings shall take place. 146. The Registrar may, on an application by a person in a
prescribed manner and form on payment of a prescribed fee, extend
the prescribed time for performing an act that is required under this
Act. 147. (1) A person that is dissatisfied with the decision of the
Registrar made under this Act may appeal to the Court within ninety
days of the person’s receipt of the decision. (2) The Registrar shall, where an appeal has been lodged
in accordance with subsection (1), submit to the Court a record of
the proceedings or any other relevant documents in relation to the
appeal. Registrar not
bound by
rules of
evidence
Power of
Registrar to
determine
time and
place of
sitting
Extension of
time
Appeal
against
decision of
Registrar

istrar not
bound by
rules of
evidence
Power of
Registrar to
determine
time and
place of
sitting
Extension of
time
Appeal
against
decision of
Registrar

Registrar to
act as soon
as
practicable
Trade Marks [No. 11 of 2023 251
148. The Registrar shall, where the Registrar is required, as
provided in this Act, to do any act or thing and no time or period is
provided within which the act or thing is to be done, be required to
do the act or thing as soon as is practicable. 149. (1) A proprietor shall, where a certificate issued in
accordance with this Act is lost or destroyed, apply to the Registrar
for a duplicate certificate of registration, in a prescribed manner
and form on payment of the prescribed fee. (2) The Registrar may, on receipt of an application under
subsection (1), issue a replacement certificate in a prescribed form. 150. The forfeiture and confiscation orders provisions in the
Forfeiture of Proceeds of Crime Act, 2010, apply to the prosecution
of offences under this Act. 151. (1) The Registrar may impose an administrative penalty
on a person for failure to comply with a provision that is not an
offence under this Act. (2) An administrative penalty under subsection (1) shall be as
prescribed.

r failure to comply with a provision that is not an
offence under this Act. (2) An administrative penalty under subsection (1) shall be as
prescribed.

(3) An administrative penalty imposed in accordance with
subsection (1) shall be paid to the Agency in a prescribed manner
and form. (4) The Registrar may, where a person fails to pay an
administrative penalty, within a prescribed period, by way of civil
action in a competent court, recover the amount of the administrative
penalty from that person as an amount due and owing to the Agency. 152. A person who contravenes any provision of this Act where
no specific penalty has been provided is liable, on conviction, to a
fine not exceeding two hundred thousand penalty units or to
imprisonment for a term not exceeding two years, or to both. 153. Where an offence under this Act is committed by a body
corporate or unincorporate body, with the knowledge, consent or
connivance of the director, manager, shareholder or partner, that
director, manager, shareholder or partner of the body corporate or
unincorporate body commits an offence and is liable, on conviction,
to the penalty specified for that offence. 154. (1) The Minister may, by statutory instrument, make
Regulations to give effect to the provisions of the Madrid Protocol
in the Republic.

offence. 154. (1) The Minister may, by statutory instrument, make
Regulations to give effect to the provisions of the Madrid Protocol
in the Republic.

Duplicate
certificate
Forfeiture and
confiscation
orders
Act No. 19
of 2010
Administrative
penalty
General
penalty
Offence by
principal
officer,
shareholder
or partner or
body
corporate or
unincorporate
body
Regulations
to give effect
to Madrid
Protocol

ral
penalty
Offence by
principal
officer,
shareholder
or partner or
body
corporate or
unincorporate
body
Regulations
to give effect
to Madrid
Protocol

252 No. 11 of 2023] Trade Marks
(2) Despite subsection (1), Regulations made under this
section may provide for—
(a) the procedure for making an application for international
registration of a mark where the Agency is the office of
origin;
(b) the procedure to be followed where the basic application
or registration fails or ceases to be in force;
(c) the procedure to be followed where the Agency receives
from the International Bureau a request for extension of
protection to the Republic;
(d) the effect of a successful request for extension of
protection to the Republic;
(e) the transformation of an application for an international
registration, or an international registration, into a national
application for registration;
(f) the communication of information to the International
Bureau;
(g) the fee for an application for international registration,
extension of protection and renewal of an international
registration; and
(h) any other matter necessary to give effect to the
provisions of the Madrid Protocol. 155. (1) The Minister may, by statutory instrument, make
Regulations for the better carrying out of the provisions of this Act.

f the Madrid Protocol. 155. (1) The Minister may, by statutory instrument, make
Regulations for the better carrying out of the provisions of this Act.

(2) Despite the generality of subsection (1), Regulations made
by the Minister may make provision for—
(a) administrative requirements or any necessary details for
the implementation of this Act and any relevant
international treaty or convention to which the Republic
is a State Party;
(b) procedures and conditions for applications for a trade
mark and geographical indication in accordance with this
Act;
(c) forms to be used for purposes of this Act;
(d) fees to be charged for purposes of this Act;
(e) registration of trade mark agents;
(f) classifying a good or service for the purposes of
registration of trade marks;
(g) procedures, requirements, and other matters, in respect
of a registration, renewal, alteration or cancellation, of
trade marks under this Act. 156. (1) The Trade Marks Act, 1958, is repealed. (2) Despite subsection (1), the Schedule applies to the savings
and transitional provisions for purposes of this Act. Regulations
Repeal of
Cap. 401
and savings
and
transitional
provisions

le applies to the savings
and transitional provisions for purposes of this Act. Regulations
Repeal of
Cap. 401
and savings
and
transitional
provisions

253 No. 11 of 2023] Trade Marks
SCHEDULE
(Section 156 (2))
SAVINGS AND TRANSITIONAL PROVISIONS
1. Any act done or executed in accordance with the repealed
Act and in force and operative at the commencement of this Act
has effect as if done or executed in accordance with this Act. 2. An application for the registration of a trade mark made
under the repealed Act prior to the commencement of this Act shall
be processed in accordance with this Act. 3. (1) The enactment of this Act does not affect any
investigations or legal proceedings instituted under the repealed Act,
which were pending before the Registrar or in court, immediately
before the date of commencement of this Act, and such investigations
or proceedings shall be disposed of as if this Act had not been
passed. (2) An appeal which, immediately before the commencement
of this Act, was pending shall proceed as if this Act had not been
passed. 4. (1) A trade mark registered in accordance with the repealed
Act shall remain valid until the expiry of the registration and the
renewal of that trade mark shall be made in accordance with this
Act.

the repealed
Act shall remain valid until the expiry of the registration and the
renewal of that trade mark shall be made in accordance with this
Act.

(2) A reference in this Act, express or implied, to the date of
registration of a trade mark under subparagraph (1) shall be
construed as a reference to the date on which the trade mark was
registered in accordance with the repealed Act. 5. A trade mark agent registered under the repealed Act shall
apply for registration as a trade mark agent within six months of the
commencement of this Act. 6. A Register or any other register kept in accordance with the
repealed Act, shall be considered to be part of the Register kept in
accordance with this Act. 7. Infringement proceedings of a registered trade mark under
the repealed Act shall be disposed of in accordance with the repealed
Act. 8. A fee paid or unpaid before the commencement of this Act
shall be considered to be a fee paid or unpaid, in accordance with
this Act. Acts done
under
repealed Act
to remain
valid
Previous
application
Pending
proceedings
Existing
registered
trade mark
Trade mark
agents
Register
under
repealed Act
Cap.401
Infringements
under
repealed Act
Cap.401
Fee, charge
or sum paid
or unpaid in
accordance
with
repealed Act
CAp. 401

egister
under
repealed Act
Cap.401
Infringements
under
repealed Act
Cap.401
Fee, charge
or sum paid
or unpaid in
accordance
with
repealed Act
CAp. 401

9. An approval given or authorisation granted before the
commencement of this Act or any act or thing done in accordance
with the repealed Act, shall be considered to have been given or
authorised under this Act, and any approval or authorisation shall
remain valid for the period specified under the repealed Act.
Approvals
and
authorisations
Cap.401
Cap.401
254 No. 11 of 2023] Trade Marks