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LAWS OF BRUNEI
CHAPTER 98
TRADE MARKS
S 58/99
REVISED EDITION 2000
(30th December 2000)
REVISED EDITION 2000
CHAPTER 98
TRADE MARKS
Section
ARRANGEMENT OF SECTIONS
1. Citation, commencement and application.
PRELIMINARY
2. Interpretation.
3. Registrar of Trade Marks and other officers, delegation byRegistrar, and seal of Registry.
PART I
REGISTERED TRADE MARKS
Introductory
4. Trade marks.
5. Registered trade marks.
Grounds for refusal of registration
6. Absolute grounds for refusal of registration.
7. Specially protected emblems etc.
8. Relative grounds for refusal of registration.
9. Meaning of “earlier trade mark”.
10. Raising of relative grounds in case of honest concurrent use.
11. Power to require that relative grounds be raised in opposition proceedings.
Effects of registered trade mark
12. Rights conferred by registered trade mark.
13. Infringement of registered trade mark.
14. Limits on effect of registered trade mark.
15. Registration subject to disclaimer or limitation.
Infringement proceedings
16. Action for infringement.
17. Order for erasure etc. of offending sign.
18. Order for delivery up of infringing goods etc.
19. Meaning of “infringing goods, material orarticles”.
20. Period after which remedy of delivery up not available.
21. Order as to disposal of infringing goods etc.
22. Remedy for groundless threats of infringement proceedings.
Registered trade mark as object of property
23. Nature of registered trade mark.
24. Co-ownership of registered trade mark.
25. Assignment etc. of registered trade mark.
26. Registration of transactions affecting registered trade mark.
27. Trusts and equities.
28. Applications for registration of trade mark as object ofproperty.
Licensing
29. Licensing of registered trade mark.
30. Exclusive licences.
31. Rights of licensee in case of infringement.
32. Rights of exclusive licensee.
Application for registered trade mark
33. Application for registration.
34. Date of filing.
35. Classification of trade marks.
Priority
36. Claims to priority.
37. Temporary protection.
Registration procedure
38. Examination of application.
39. Publication and opposition proceedings.
40. Withdrawal, restriction or amendment of application.
41. Registration.
42. Registration: supplementary provisions.
Duration, renewal and alteration of registered trade mark
43. Duration of registration.
44. Renewal of registration.
45. Alteration of registered trade mark.
Surrender, revocation and invalidity
46. Surrender of registered trade mark.
47. Revocation of registration.
48. Grounds for invalidity of registration.
49. Effect of acquiescence.
Collective marks
50. Collective marks.
51. Application of Act to collective marks.
Certification marks
52. Certification marks.
53. Application of Act to certification marks.
PART II
Protection of Well-Known Trade Marks
54. Protection of well-known trade marks.
Emblems etc.
55. National emblems etc. of Paris Convention and World Trade Organisation countries.
56. Emblems etc. of certain international organisations.
57. Notification under Article 6 ter of Paris Convention.
Acts of agents or representatives
58. Acts of agents or representatives.
59. Time limit for application under section 58(3).
PART III
ADMINISTRATIVE AND OTHER SUPPLEMENTARY PROVISIONS
The register
60. The register.
61. Rectification of register.
Powers and duties of Registrar
62. Power to require use of forms.
63. Information about applications and registered trade marks.
64. Costs and security for costs.
65. Evidence before Registrar.
66. Exclusion of liability in respect of official acts.
Legal proceedings and appeals
67. Registration prima facie evidence of validity.
68. Certificate of validity of contested registration.
69. Registrar’s appearance in proceedings involvingregister.
70. Appeals from Registrar.
71. Rules of court.
Fees, business hours etc.
72. Fees.
73. Business hours and business days.
74. Publication in Gazette .
Trade mark agents
75. Recognition of agents.
76. Register of trade mark agents.
77. Unregistered persons not to be described as registered trade markagents.
78. Power to prescribe conditions etc. for mixed partnerships andbodies corporate.
79. Use of term “trade mark attorney”.
80. Privilege for communications with registered trade markagents.
81. Power of Registrar to refuse to deal with certain agents.
PART IV
PROCEEDINGS RELATING TO IMPORTATION OF INFRINGING GOODS
82. Infringing goods may be detained.
83. Determination whether goods are infringing goods.
84. Limitations on requirement to supply information.
85. Notice of determination.
86. Detention of infringing goods.
87. Proceedings in respect of infringing goods.
88. Forfeiture of goods by consent.
89. Powers of court.
90. Inspection of goods.
91. Power of Controller of Customs to disclose information.
92. Delegation of powers and duties.
93. Protection of Government and officers of customs fromliability.
Offences
94. Unauthorised use of trade mark etc. in relation to goods.
95. Application of Chapter 96 in enforcement.
96. Falsification of registers etc.
97. Falsely representing trade mark as registered.
98. Counterfeiting trade mark used by another.
99. Making or possession of instrument for counterfeiting trademark.
100. Importing or selling etc. goods marked with counterfeit trademark.
101. Falsely applying registered trade mark to services.
102. Unauthorised use of Royal arms etc.
103. Offences committed by partnership and bodies corporate.
Forfeiture of counterfeit goods etc.
104. Forfeiture.
PART V
MISCELLANEOUS AND GENERAL PROVISIONS
105. Burden of proving use of trade mark.
106. Regulations and rules.
107. Amendment of Third Schedule.
108. Transitional.
FIRST SCHEDULE — COLLECTIVE MARKS
SECOND SCHEDULE — CERTIFICATION MARKS
THIRD SCHEDULE — TRANSITIONAL PROVISIONS
_______________________
TRADE MARKS ACT
An Act to make new provision for registered trade marks; and for connectedpurposes
Commencement (except sections 75 to 81): 1st June 2000
[S 18/2000]
Citation, commencement and applications.
1. (1) This Act may be cited as the Trade Marks Act, and shall commence on the day or days to be appointed by the Attorney General, withthe approval of His Majesty the Sultan and Yang Di-Pertuan, by notification inthe Gazette .
(2) Different days may be appointed under subsection (1) for the different provisions of this Act or for different purposes of the sameprovision.
(3) This Act applies to things done in or on the continental shelf
(being the area proclaimed by His Highness the Sultan on 30th June, 1954 bythe Continental Shelf Proclamation 1954) on a structure or vessel which ispresent there for purposes directly connected with the exploration of the seabedand its subsoil or with the exploitation of their natural resources, as itapplies to things done in Brunei Darussalam.
PRELIMINARY
Interpretation.
2. (1) In this Act, unless the context otherwise requires—
“assignment” means assignment by act of the partiesconcerned;
“business” includes any trade or profession;
“certification mark” shall be construed in accordance withsection 52;
“claimant”, in sections 82, 83, 85 and 89, means a person who hasgiven a notice under subsection (1) of section 82;
“collective mark” shall be construed in accordance with section 50;
“Controller of Customs” means the Controller of Customs for thepurposes of the Customs Act (Chapter 36);
“court” means the High Court or an Intermediate Court;
“customs control” has the same meaning as in subsection (2) ofsection 2 of the Customs Act (Chapter 36);
“earlier right”, in relation to a trade mark, means the right ofthe proprietor under paragraph (b) of subsection (4) of section 8 toprevent the use of that mark;
“earlier trade mark” has the same meaning as in subsection (1) ofsection 9;
“exclusive licence” has the same meaning as in subsection (1) ofsection 30;
“infringement” of a registered trade mark means any actspecified in section 13, if done without the consent of theproprietor;
“infringement proceedings”, in relation to a registered trade mark, includes proceedings under section 18;
“infringing articles” shall be construed in accordance with subsection (3) of section 19;
“infringing goods” shall be construed in accordance withsubsection (1) of section 19;
“infringing material” shall be construed in accordance with subsection (2) of section 19;
“officer of customs” has the same meaning as in subsection (1) of section 2 of the Customs Act (Chapter 36);
“Paris Convention” means the Paris Convention for the Protection of Industrial Property of 20th. March, 1883, as revised oramended;
“Paris Convention country” means a country, other than Brunei Darussalam, which is a party to the Paris Convention;
“publish” means make available to the public, and references topublication —
(a) in relation to an application for registration, are to publicationunder subsection (1) of section 39; and
(b) in relation to registration, are to publication under subsection(4) of section 41;
“register” means the Register of Trade Marks maintained by the Registrar under subsection (1) of section 60;
“registered trade mark agent” means a person whose name isentered in the register kept under rules made under section 76;
“Registrar” means the Registrar of Trade Marks appointed undersection 3;
“registration” means, unless the context otherwise requires, registration in the register;
“repealed Act” means the Trade Marks Act (Chapter 98) repealed by this Act;
“trade” includes any business or profession;
“transfer” means transfer by operation of law, devolution on thepersonal representative of a deceased person, or any other mode of transferother than an assignment;
“use” (or any particular description of use) of a trade mark, orof a sign identical with, similar to, or likely to be mistaken for a trade mark,includes use (or that description of use) otherwise than by means of a graphicrepresentation;
“World Trade Organisation Agreement” means the Agreement Establishing the World Trade Organisation done at Marrakesh in 1994, as revised or amended;
“World Trade Organisation country” means any country, territoryor area, other than Brunei Darussalam, which is a party to the World TradeOrganisation Agreement.
(2) References in any law passed or made before the commencement of thisAct to trade marks or registered trade marks within the meaning of the repealedAct shall, unless the context otherwise requires, be construed after thecommencement of this Act as references to trade marks or registered trade markswithin the meaning of this Act.
(3) References subsection (2) and the Third Schedule to thecommencement of this Act are to the commencement of the main substantiveprovisions of Parts I and III of this Act and the consequential repeal of therepealed Act.
Registrar of Trade Marks and other officers, delegation by Registrar, andseal of Registry.
3. (1) There shall be a Registrar of Trade Marks who shall have thechief control of the Registry of Trade Marks.
(2) There shall be one or more Deputy Registrars of Trade Marks who shall,subject to the control of the Registrar, have all the powers and functions of the Registrar under this Act, other than the powers of the Registrarunder subsection (5).
(3) There shall be one or more Assistant Registrars of Trade Marks.
(4) The Registrar and Deputy Registrars of Trade Marks under this sectionshall be appointed by His Majesty the Sultan and Yang Di-Pertuan.
(5) The Registrar may, in relation to a particular matter or class ofmatters, by writing under his hand delegate all or any of his powers orfunctions under this Act (except this power of delegation) to an AssistantRegistrar of Trade Marks or any public officer so that the delegated powers andfunctions may be exercised by the delegate with respect of the matter or classor matters specified in the instrument of delegation.
(6) A delegation under this section is revocable at will and nodelegation shall prevent the exercise of any power or function by theRegistrar or by any Deputy Registrar of Trade Marks.
(7) There shall be a seal of the Registry of Trade Marks and the seal shallbe of such device as may be approved by the Attorney General.
(8) Impressions of the seal shall be judicially noticed and admitted inevidence.
PART I
REGISTERED TRADE MARKS
Introductory
Trade marks.
4. (1) In this Act, “trade mark” means any visuallyperceptible sign capable of being represented graphically which is capable ofdistinguishing goods or services of one undertaking from those of otherundertakings. A trade mark may, in particular, consist of words (includingpersonal names), designs, letters, numerals or the shape of goods or theirpackaging.
(2) References in this Act to a trade mark include, unless the contextotherwise requires, references to a collective mark and a certificationmark.
Registered trade marks.
5. (1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of aregistered trade mark has the rights and remedies provided by this Act.
(2) No proceedings lie to prevent or recover damages for theinfringement of an unregistered trade mark as such; but nothing in this Actaffects any law relating to passing off.
Grounds for refusal of registration
Absolute grounds for refusal of registration.
6. (1) The following shall not be registered —
(a) signs which do not satisfy the requirements of subsection (1) of section 4;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services;
(d) trade marks which consist exclusively of signs orindications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that a trade mark shall not be refused registration by virtue ofparagraph (b) , (c) or (d) if, before the date ofapplication for registration, it has in fact acquired a distinctive character asa result of the use made of it.
(2) A sign shall not be registered as a trade mark if it consists exclusively of —
(a) the shape which results from the nature of the goodsthemselves;
(b) the shape of goods which is necessary to obtain a technicalresult; or
(c) the shape which gives substantial value to the goods.
(3) A trade mark shall not be registered if it is —
(a) contrary to public policy or to accepted principles ofmorality; or
(b) of such a nature as to deceive the public.
(4) A trade mark shall not be registered if or to the extent that its useis prohibited in Brunei Darussalam by any law.
(5) A trade mark shall not be registered in the cases specified or referredto in section 7.
(6) A trade mark shall not be registered if or to the extent that theapplication is made in bad faith.
Specially protected emblems etc.
7. (1) A trade mark which consists of or contains —
(a) a representation of the Emblem, Arms and Regalia of Brunei Darussalam, including the Royal Arms, State Crest, the Insignia of Royalty, armorial bearings and other insignia and emblems of Brunei Darussalam; or any device so closely resembling any of them as to be likely to be mistaken for them;
(b) a representation of the Royal crowns, and His Majesty the Sultanand Yang Di-Pertuan’s Standard or any other Royal flag, or any colourableimitation thereof;
(c) a representation of His Majesty the Sultan and YangDi-Pertuan or any member of the Royal family, or any colourable imitationthereof;
(d) any word, letter or device likely to lead persons to believe thatthe applicant either has or recently has had Royal patronage or authorisation;or
(e) any name or thing which is a specified name or specified emblem as defined in section 2 of the Emblems and Names (Prevention of Improper Use) Act (Chapter 94), or any colourable imitation thereof,
shall not be registered, unless it appears to the Registrar that consent has been given by or on behalf of His Majesty the Sultan and Yang Di-Pertuan or, as the case may be, that member of the Royal family.
(2) A trade mark which consists of or contains a representation of thenational flag of Brunei Darussalam shall not be registered if it appears to theRegistrar that the use of that trade mark would be misleading or grosslyoffensive.
(3) A trade mark shall not be registered in the cases specified in section55 or 56.
(4) Provision may be made by rules prohibiting in such cases as may be prescribed the registration of a trade mark which consists of orcontains —
(a) arms which a person is authorised to use by virtue of a grant ofarms by His Majesty the Sultan and Yang Di-Pertuan; or
(b) insignia so closely resembling such arms as to be likely to bemistaken for them,
unless it appears to the Registrar that consent has been given by or onbehalf of that person. Where such a mark is registered, nothing in this Actshall be construed as authorising its use in any way contrary to any lawrelating to arms.
Relative grounds for refusal of registration.
8. (1) A trade mark shall not be registered if it is identical withan earlier trade mark, and the goods or services for which the trade mark isapplied for are identical with the goods or services for which the earlier trademark is protected.
(2) A trade mark shall not be registered if because —
(a) it is identical with an earlier trade mark and is to beregistered for goods or services identical with or similar to those for whichthe earlier trade mark is protected; or
(b) it is similar to an earlier trade mark and is to be registered forgoods or services identical with or similar to those for which the earlier trademark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which —
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are notsimilar to those for which the earlier trade mark is protected,
shall not be registered if, or to the extent that, the earlier trade mark hasa reputation in Brunei Darussalam and the use of the later mark without duecause would take unfair advantage of, or be detrimental to, the distinctivecharacter or the repute of the earlier trade mark.
(4) A trade mark shall not be registered if, or to the extent that, its usein Brunei Darussalam is liable to be prevented —
(a) by virtue of any law protecting an unregistered trade mark orother sign used in the course of trade; or
(b) by virtue of an earlier right, other than those referred to insubsections (1), (2) and (3) or in paragraph (a) , or by any law relatingto the infringement of copyright or registered designs.
(5) Nothing in this section prevents the registration of a trade mark wherethe proprietor of the earlier trade mark or other earlier right consents to theregistration.
Meaning of “earlier trade mark”.
9. (1) In this Act, “earlier trade mark” means—
(a) a registered trade mark which has a date of application forregistration earlier than that of the trade mark in question, taking account(where appropriate) of the priorities claimed in respect of the trade marks;or
(b) a trade mark which, at the date of application for registration ofthe trade mark in question or (where appropriate) of the priority claimed inrespect of the application, was entitled to protection under the ParisConvention as a well-known trade mark.
(2) References in this Act to an earlier trade mark include a trade mark inrespect of which an application for registration has been made and which, ifregistered, would be an earlier trade mark by virtue of paragraph
(a) of subsection (1), subject to its being so registered.
(3) A trade mark within paragraph (a) of subsection (1) whose registration expires shall continue to be taken into account indetermining the registrability of a later mark for a period of one year afterthe expiry, unless the Registrar is satisfied that there was no bona fide use of the mark during the 2 years immediately preceding the expiry.
Raising of relative grounds in case of honest concurrent use.
10. (1) This section applies where, on an application for theregistration of a trade mark, it appears to the Registrar —
(a) that there is an earlier trade mark in relation to which theconditions set out in subsection (1), (2) or (3) of section 8 applys; or
(b) that there is an earlier right in relation to which the conditionset out in subsection (4) of section 8 is satisfied,
but the applicant shows to the satisfaction of the Registrar that there hasbeen honest concurrent use of the trade mark for which registration issought.
(2) In that case, the Registrar shall not refuse the application by reasonof the earlier trade mark or other earlier right unless objection on that groundis raised in opposition proceedings by the proprietor of that earlier trade markor other earlier right.
(3) For the purpose of this section, “honest concurrent use”means such use in Brunei Darussalam, by the applicant or with his consent, aswould formerly have amounted to honest concurrent use for the purpose of section33 of the repealed Act.
(4) Nothing in this section affects —
(a) the refusal of registration on the grounds mentioned insection 6; or
(b) the making of an application for a declaration of invalidity undersubsection (2) of section 48.
(5) This section does not apply when there is an order in force undersection 11.
Power to require that relative grounds be raised in opposition proceedings.
11. (1) The Attorney General may by order provide that in any case a trade mark shall not be refused registration on a ground mentioned in section 8 unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark or other earlier right.
(2) The order may make such consequential provisions as appear to theAttorney General appropriate —
(a) with respect to the carrying out by the Registrar of searches ofearlier trade marks; and
(b) as to the persons by whom an application for a declaration ofinvalidity may be made on the grounds specified in subsection (2) of section48.
(3) An order making such provision as is mentioned in paragraph (a) of subsection (2) may direct that so much of section 38 as requires a searchto be carried out shall cease to have effect.
(4) An order making such provision as is mentioned in paragraph (b) of subsection (2) may provide that so much of subsection (3) of section 48as provides that any person may make an application for a declaration of invalidity shall have effect subject to the provisions of the order.
(5) An order under this section may contain such transitionalprovisions as appear to the Attorney General to be appropriate.
Effects of registered trade mark
Rights conferred by registered trade mark.
12. (1) The proprietor of a registered trade mark has exclusiverights in the trade mark which are infringed by use of the trade mark in BruneiDarussalam without his consent. The acts amounting to infringement, if donewithout the consent of the proprietor, are specified in section 13.
(2) The rights of the proprietor have effect from the date of filing of theapplication for registration:
Provided that —
(a) no infringement proceedings may be begun before the date on whichthe trade mark is in fact registered; and
(b) no offence under section 94 is committed by anything done beforethe date of publication of the registration.
Infringement of registered trade mark.
13. (1) A person infringes a registered trade mark if he uses in thecourse of trade a sign which is identical with the trade mark in relation togoods or services which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if he uses in the course oftrade a sign where because —
(a) the sign is identical with the trade mark and is used in relationto goods or services similar to those for which the trade mark is registered;or
(b) the sign is similar to the trade mark and is used in relation togoods or services identical with or similar to those for which the trade mark isregistered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
(3) A person infringes a registered trade mark if he uses in the course oftrade a sign which —
(a) is identical with or similar to the trade mark; and
(b) is used in relation to goods or services which are not similar tothose for which the trade mark is registered,
where the trade mark has a reputation in Brunei Darussalam and the use of thesign without due cause takes unfair advantage of, or is detrimental to, thedistinctive character or repute of the trade mark.
(4) For the purpose of this section, a person uses a sign if he —
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market orstocks them for those purposes under the sign, or offers or supplies servicesunder the sign;
(c) imports or exports goods under the sign; or
(d) uses the sign on business papers or in advertising.
(5) A person who applies a registered trade mark to materialintended to be used for labelling or packaging goods, as a business paper, orfor advertising goods or services, shall be treated as a party to any use of thematerial which infringes the registered trade mark if when he applied the markhe knew or had reason to believe that the application of the mark was not dulyauthorised by the proprietor or a licensee.
(6) Nothing in this section shall be construed as preventing the use of aregistered trade mark by any person for the purpose of identifying goods orservices as those of the proprietor or a licensee:
Provided that any such use otherwise than in accordance with honest practicesin industrial or commercial matters shall be treated as infringing theregistered trade mark if the use without due cause takes unfair advantage of, oris detrimental to, the distinctive character or repute of the trade mark.
Limits on effect of registered trade mark.
14. (1) Subject to subsection (6) of section 48, a registered trademark is not infringed by the use of another registered trade mark in relation togoods or services for which the latter is registered.
(2) A registered trade mark is not infringed by —
(a) the use by a person of his own name or address;
(b) the use of indications concerning the kind, quality, quantity,intended purpose, value, geographical origin, time of production of goods or ofrendering of services, or other characteristics of goods or services; or
(c) the use of the trade mark where it is necessary to indicate theintended purpose of a product or service:
Provided the use is in accordance with honest practices inindustrial or commercial matters.
(3) A registered trade mark is not infringed by the use in the course oftrade in a particular locality of an earlier right which applies only in thatlocality. For the purpose of this subsection, “earlier right” means an unregistered trade mark or other sign continuously usedin relation to goods or services by a person or a predecessor in title of hisfrom a date prior to whichever is the earlier of —
(a) the use of the first-mentioned trade mark in relation to thosegoods or services by the proprietor or a predecessor in title of his; or
(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or apredecessor in title of his,
and an earlier right shall be regarded as applying in a locality if, or tothe extent that, its use in that locality is protected by any law.
Registration subject to disclaimer or limitation.
15. (1) An applicant for registration of a trade mark, or theproprietor of a registered trade mark, may —
(a) disclaim any right to the exclusive use of any specifiedelement of the trade mark; or
(b) agree that the rights conferred by the registration shall besubject to a specified territorial or other limitation,
and where the registration of a trade mark is subject to such a disclaimer orlimitation, the rights conferred by section 12 are restricted accordingly.
(2) Provision shall be made by rules as to the publication and entry in theregister of such a disclaimer or limitation.
Infringement proceedings
Action for infringement.
16. (1) An infringement of a registered trade mark is actionable bythe proprietor of the trade mark.
(2) In an action for infringement, all such relief by way of damages,injunction, account or otherwise is available to him as is available in respectof the infringement of any other property right.
Order for erasure etc. of offending sign.
17. (1) Where a person is found to have infringed a registered trademark, the court may make an order requiring him —
(a) to cause the offending sign to be erased, removed orobliterated from any infringing goods, material or articles in hispossession, custody or control; or
(b) if it is not reasonably practicable for the offending sign to beerased, removed or obliterated, to secure the destruction of suchinfringing goods, material or articles.
(2) If an order under subsection (1) is not complied with, or it appears to the court likely that such an order would not be complied with, the court may order that the infringing goods, material or articles be delivered to such person as the court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be.
Order for delivery up of infringing goods etc.
18. (1) The proprietor of a registered trade mark may apply to thecourt for an order for the delivery up to him, or such other person as the courtmay direct, of any infringing goods, material or articles which a person has inhis possession, custody or control in the course of business.
(2) An application shall not be made after the end of the period specifiedin section 20; and no order shall be made unless the court also makes, or itappears to the court that there are grounds for making, an order under section21.
(3) A person to whom any infringing goods, material or articles aredelivered up in pursuance of an order under this section shall, if an orderunder section 21 is not made, retain them pending the making of an order, or thedecision not to make an order, under that section.
(4) Nothing in this section affects any other power of the court.
Meaning of “infringing goods, material or articles”.
19. (1) Goods are “infringing goods”, in relation to aregistered trade mark, if they or their packaging bear a sign identical orsimilar to that mark and —
(a) the application of the sign to the goods or their packaging was aninfringement of the registered trade mark;
(b) the goods are proposed to be imported and the application of thesign in Brunei Darussalam to them or their packaging would be an infringement ofthe registered trade mark; or
(c) the sign has otherwise been used in relation to the goods in sucha way as to infringe the registered trade mark.
(2) Material is “infringing materials”, in relation to aregistered trade mark, if it bears a sign identical with or similar to that markand either —
(a) it is used for labelling or packaging goods, as a business paperor for advertising goods or services, in such a way as to infringe theregistered trade mark; or
(b) it is intended to be so used and such use would infringe theregistered trade mark.
(3) “Infringing articles”, in relation to a registered trademark, means articles —
(a) which are specifically designed or adapted for makingcopies of a sign identical or similar to that mark; and
(b) which a person has in his possession, custody or control, knowingor having reason to believe that they have been or are to be used to produceinfringing goods or infringing material.
Period after which remedy of delivery up not available.
20. (1) An application for an order under section 18 may not be madeafter the end of the period of 6 years from —
(a) in the case of infringing goods, the date on which the trade markwas applied to the goods or their packaging;
(b) in the case of infringing material, the date on which the trademark was applied to the material; or
(c) in the case of infringing articles, the date on which they weremade,
except as mentioned in subsection (2).
(2) If, during the whole or part of that period, the proprietor of theregistered trade mark —
(a) is under a disability; or
(b) is prevented by fraud or concealment from discovering the factsentitling him to apply for an order,
an application may be made at any time before the end of the period of 6years from the date on which he ceased to be under a disability or, as the casemay be, could with reasonable diligence have discovered those facts.
(3) In subsection (2), “disability” has the same meaningas in subsection (2) of section 4 of the Limitation Act (Chapter 14).
Order as to disposal of infringing goods etc.
21. (1) Where infringing goods, infringing material or infringingarticles have been delivered up in pursuance of an order under section18, an application may be made to the court —
(a) for an order that they be destroyed or forfeited to suchperson as the court may think fit; or
(b) for a decision that no such order should be made.
(2) In considering what order (if any) should be made, the court shallconsider whether other remedies available in an action for infringement of theregistered trade mark would be adequate to compensate the proprietor and anylicensee and protect their interests.
(3) Provision may be made by rules of court as to the service of notice onpersons having an interest in the goods, material or articles, and any suchperson is entitled —
(a) to appear in proceedings for an order under this section, whetheror not he was served with notice; and
(b) to appeal against any order made, whether or not heappeared,
and an order shall not take effect until the end of the period within whichnotice of an appeal may be given or, if before the end of that period notice ofappeal has been given, until the final determination or abandonment of theproceedings on the appeal.
(4) Where there is more than one person interested in the goods, materialor articles, the court shall make such order as it thinks just.
(5) If the court decides that no order should be made under this section, the person in whose possession, custody or control the goods, materialor articles were before being delivered up is entitled to their return.
(6) References in this section to a person having an interest in goods, material or articles include any person in whose favour an order could be made under this section or under any law which makes similar provision in relation to the infringement of copyright, rights in performances or registered designs.
Remedy for groundless threats of infringement proceedings.
22. (1) Where a person threatens another with proceedings for infringement of a registered trade mark other than —
(a) the application of the mark to goods or their packaging;
(b) the importation of goods to which, or to the packaging of which,the mark has been applied; or
(c) the supply of services under the mark,
any person aggrieved may bring proceedings for relief under this section.
(2) The relief which may be applied for is any of the following —
(a) a declaration that the threats are unjustifiable;
(b) an injunction against the continuance of the threats;
(c) damages in respect of any loss the person aggrieved has sustainedby the threats,
and he is entitled to such relief unless the defendant shows that the acts inrespect of which proceedings were threatened constitute (or if done wouldconstitute) an infringement of the registered trade mark.
(3) If that is shown by the defendant, the person aggrieved isnevertheless entitled to relief if he shows that the registration of the trademark is invalid or liable to be revoked in a relevant respect.
(4) The mere notification that a trade mark is registered, or that anapplication for registration has been made, does not constitute a threat ofproceedings for the purpose of this section.
Registered trade mark as object of property
Nature of registered trade mark.
23. A registered trade mark is property within the meaning of paragraph (a) of the definition of “property” in subsection (1) of section 3 of the Interpretation and General Clauses Act (Chapter 4).
Co-ownership of registered trade mark.
24. (1) Where a registered trade mark is granted to 2 or morepersons jointly, each of them is entitled, subject to any agreement to thecontrary, to an equal undivided share in the registered trade mark.
(2) The following provisions apply where 2 or more persons are co-proprietors of a registered trade mark, whether by virtue of subsection (1) orotherwise.
(3) Subject to any agreement to the contrary, each co-proprietor isentitled, by himself or his agents, to do for his own benefit and without theconsent of or the need to account to the other or others, any act which wouldotherwise amount to an infringement of the registered trade mark.
(4) One co-proprietor may not without the consent of the other or others—
(a) grant a licence to use the registered trade mark; or
(b) assign or charge his share in the registered trade mark.
(5) Infringement proceedings may be brought by any co-proprietor, but hemay not, without the leave of the court, proceed with the action unless theother, or each of the others, is either joined as a plaintiff or added as adefendant. A co-proprietor who is added as a defendant shall not be made liablefor any costs in the action unless he has taken part in the proceedings. Nothingin this subsection affects the granting of interlocutory relief on theapplication of a single co-proprietor.
(6) Nothing in this section affects the mutual rights and obligations oftrustees or personal representatives, or their rights and obligations assuch.
Assignment etc. of registered trade mark.
25. (1) A registered trade mark is, subject to this Act,transmissible by assignment or transfer in the same way as other property. It is so transmissible either in connection with the goodwillof a business or independently.
(2) An assignment or transfer of a registered trade mark may be limited soas to apply —
(a) in relation to some but not all of the goods or services for whichthe trade mark is registered; or
(b) in relation to use of the trade mark in a particular manner or aparticular locality.
(3) An assignment of a registered trade mark is not effective unless it isin writing and signed by or on behalf of the assignor.
(4) Subsections (1), (2) and (3) apply to an assignment by way of securityas in relation to any other assignment.
(5) A registered trade mark may be the subject of a charge in the same wayas other property.
(6) Nothing in this Act shall be construed as affecting the assignment or transfer of an unregistered trade mark as part of the goodwillof a business.
Registration of transactions affecting registered trade mark.
26. (1) On application being made to the Registrar by —
(a) a person claiming to be entitled to an interest in or under aregistered trade mark by virtue of a registrable transaction; or
(b) any other person claiming to be affected by such a transaction,
the prescribed particulars of the transaction shall be entered in theregister.
(2) The following are registrable transactions —
(a) an assignment of a registered trade mark or any right in it;
(b) the grant of a licence under a registered trade mark;
(c) the granting of any interest by way of security (whether fixed orfloating) over a registered trade mark or any right in or under it;
(d) the making by a personal representative of an assignment inrelation to a registered trade mark or any right in or under it;
(e) an order of a court transferring a registered trade mark or anyright in or under it.
(3) Until an application has been made for registration of theprescribed particulars of a registrable transaction —
(a) the transaction is ineffective as against a person acquiring aconflicting interest in or under the registered trade mark in ignorance of it;and
(b) a person claiming to be a licensee by virtue of thetransaction does not have the protection of sections 31 and 32.
(4) Where a person becomes the proprietor or a licensee of aregistered trade mark by virtue of a registrable transaction, then unless—
(a) an application for registration of the prescribed particulars ofthe transaction is made before the end of the period of 6 months beginning withits date; or
(b) the court is satisfied that it was not practicable for such anapplication to be made before the end of that period and that an application wasmade as soon as practicable thereafter,
he is not entitled to damages or an account of profits in respect of anyinfringement of the registered trade mark occurring after the date of thetransaction and before the prescribed particulars of the transaction wereregistered.
(5) Provision may be made by rules as to —
(a) the amendment of registered particulars relating to a licence soas to reflect any alteration of the terms of the licence;
(b) the removal of such particulars from the register —
(i) where it appears from the registered particulars that the licence wasgranted for a fixed period and that period has expired; or
(ii) where no such period is indicated and, after such period asmay be prescribed, the Registrar has notified the parties of his intention toremove the particulars from the register;
(c) the amendment or removal from the register of particulars relatingto an interest by way of security on the application of, or with the consent of,the person entitled to the benefit of that interest.
Trusts and equities.
27. (1) No notice of any trust (express, implied or constructive)shall be entered in the register; and the Registrar shall not be affected by anysuch notice.
(2) Subject to this Act, equities in respect of a registered trade mark maybe enforced in like manner as in respect of other property.
Applications for registration of trade mark as object of property.
28. (1) Sections 23 to 27 apply, with the necessary modifications,in relation to an application for the registration of a trade mark as inrelation to a registered trade mark.
(2) In section 24, as it applies in relation to an application for registration, the reference in subsection (1) to the granting of theregistration shall be construed as a reference to the making of theapplication.
(3) In section 26, as it applies in relation to a transaction affecting anapplication for the registration of a trade mark, the references to the entry ofparticulars in the register, and to the making of an application to registerparticulars, shall be construed as references to the giving of notice to theRegistrar of those particulars.
Licensing
Licensing of registered trade mark.
29. (1) A licence to use a registered trade mark may be general or limited. A limited licence may apply —
(a) in relation to some but not all of the goods or services for whichthe trade mark is registered; or
(b) in relation to use of the trade mark in a particular manner or aparticular locality.
(2) A licence is not effective unless it is in writing and signed by or onbehalf of the grantor. This requirement may be satisfied in a case where thegrantor is a body corporate by the affixing of its seal.
(3) Unless the licence provides otherwise, it is binding on asuccessor in title to the grantor’s interest, and references in this Actto doing anything with, or without, the consent of the proprietor of aregistered trade mark shall be construed accordingly.
(4) Where the licence so provides, a sub-licence may be granted by thelicensee; and references in this Act to a licence or licensee include a sub-licence or sub-licensee.
Exclusive licences.
30. (1) In this Act, “exclusive licence” means a licence(whether general or limited) authorising the licensee to the exclusion of allother persons, including the person granting the licence, to use a registeredtrade mark in the manner authorised by the licence.
(2) An exclusive licensee has the same rights against a successor in titlewho is bound by the licence as he has against the person granting thelicence.
Rights of licensee in case of infringement.
31. (1) This section has effect with respect to the rights of alicensee in relation to infringement of a registered trade mark, but does notapply where or to the extent that, under subsection (1) of section 32, thelicensee has a right to bring proceedings in his own name.
(2) A licensee is entitled, unless his licence or any licence through whichhis interest is derived provides otherwise, to call on the proprietor of theregistered trade mark to take infringement proceedings in respect of any matterwhich affects his interests.
(3) If the proprietor —
(a) refuses to do so; or
(b) fails to do so within 2 months after being called upon,
the licensee may bring the proceedings in his own name as if he were theproprietor.
(4) Where infringement proceedings are brought by a licensee under thissection, the licensee may not, without the leave of the court, proceed with theaction unless the proprietor is either joined as a plaintiff or added as adefendant. Nothing in this subsection affects the granting of interlocutoryrelief on the application of a licensee alone.
(5) A proprietor who is added as a defendant under subsection (4) shall notbe made liable for any costs in the action unless he has taken part in theproceedings.
(6) In infringement proceedings brought by the proprietor of aregistered trade mark, any loss suffered or likely to be suffered by anylicensee shall be taken into account; and the court may give such directions asit thinks fit as to the extent to which the plaintiff is to hold the proceeds ofany pecuniary remedy on behalf of such licensee.
(7) This section applies in relation to an exclusive licensee if or to theextent that he has, under subsection (1) of section 32, the rights and remediesof an assignee as if he were the proprietor of the registered trade mark.
Rights of exclusive licensee.
32. (1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights in respect of matters occurring after the grant of the licence as if the licence had been an assignment. Where or to the extent that any such provision is made, the licensee is entitled, subject to the provisions of the licence and to subsections (2) to (8), to bring infringement proceedings against any person other than the proprietor in his own name.
(2) Any such rights of an exclusive licensee are concurrent with those ofthe proprietor of the registered trade mark; and references to the proprietor ofa registered trade mark in this Act relating to infringement shall be construedaccordingly.
(3) In an action brought by an exclusive licensee under this section, adefendant may avail himself of any defence which would have beenavailable to him if the action had been brought by the proprietor of theregistered trade mark.
(4) Where infringement proceedings brought by the proprietor or anexclusive licensee relate wholly or partly to an infringement in respect ofwhich they have concurrent rights of action, the proprietor or, as the case maybe, the exclusive licensee may not, without the leave of the court, proceed withthe action unless the other of them has either been joined as a plaintiff oradded as a defendant. Nothing in this subsection affects the granting ofinterlocutory relief on the application of a proprietor or exclusive licenseealone.
(5) A person who is added as a defendant under subsection (4) shall not bemade liable for any costs in the action unless he has taken part in theproceedings.
(6) Where infringement proceedings are brought which relate wholly orpartly to an infringement in respect of which the proprietor and an exclusivelicensee have or had concurrent rights of action —
(a) the court shall in assessing damages take into account —
(i) the terms of the licence; and
(ii) any pecuniary remedy already awarded or available to either of them inrespect of the infringement;
(b) no account of profits shall be directed if an award ofdamages has been made, or an account of profits has been directed, in favour ofthe other of them in respect of the infringement; and
(c) the court shall, if an account of profits is directed, apportionthe profits between them as the court considers just, subject to any agreementbetween them.
This subsection applies whether or not the proprietor and the exclusivelicensee are both parties to the action; and if they are not both parties thecourt may give such directions as it thinks fit as to the extent to which theparty to the proceedings is to hold the proceeds of any pecuniary remedy onbehalf of the other.
(7) The proprietor of a registered trade mark shall notify anyexclusive licensee who has a concurrent right of action before applying for anorder under section 18; and the court may on the application of the licenseemake such order under that section as it thinks fit having regard to the termsof the licence.
(8) Subsections (4) to (7) have effect subject to any agreement to thecontrary between the exclusive licensee and the proprietor.
Application for registered trade mark
Application for registration.
33. (1) An application for registration of a trade mark shall bemade to the Registrar.
(2) The application shall contain —
(a) a request for registration of the trade mark;
(b) the name and address of the applicant;
(c) a statement of the goods or services in relation to which it issought to register the trade mark; and
(d) a representation of the trade mark.
(3) The application shall state that the trade mark is being used, by theapplicant or with his consent, in relation to those goods or services, or thathe has a bona fide intention that it should be so used.
(4) The application shall be subject to the payment of the application feeand such classification fees as may be appropriate.
Date of filing.
34. (1) The date of filing of an application for registration of atrade mark is the date on which documents containing everything required by
subsection (2) of section 33 are furnished to the Registrar by the applicant.If the documents are furnished on different days, the date of filing is the lastof those days.
(2) References in this Act to the date of application for registration areto the date of filing of that application.
Classification of trade marks.
35. (1) Goods and services shall be classified for the purpose ofthe registration of trade marks according to a prescribed system ofclassification.
(2) Any question arising as to the class within which any goods or servicesfall shall be determined by the Registrar, whose decision shall be final.
Priority
Claims to priority.
36. (1) A person who has filed an application for protection of atrade mark in a Paris Convention country, or a World Trade Organisation country,or his successor in title, has a right to priority for the purpose ofregistering the same trade mark under this Act in respect of any or all of thesame goods or services, for a period of 6 months from the date of filing of thefirst such application.
(2) If the application for registration under this Act is made within that6 months period —
(a) the relevant date for the purpose of establishing which rightstake precedence shall be the date of filing of the first application; and
(b) the registrability of the trade mark shall not be affected by anyuse of the mark in Brunei Darussalam in the period between that date and thedate of the application for registration under this Act.
(3) Any filing which in a Paris Convention country or a World TradeOrganisation country is equivalent to a regular national filing, under thatcountry’s domestic legislation or an international agreement, shall betreated as giving rise to the right of priority. In this subsection,“regular national filing” means any filing which is adequate toestablish the date on which the application was filed in that country, whateverthe result of that application.
(4) A subsequent application concerning the same subject as the firstapplication, filed in the same country, shall be considered the firstapplication (of which the filing date is the starting date of the period ofpriority), if at the time of subsequent application —
(a) the previous application has been withdrawn, abandoned or refused,without having been open to public inspection and without leaving any rightsoutstanding; and
(b) it had not yet served as a basis for claiming a right ofpriority.
Such previous application may not thereafter serve as a basis for claiming aright of priority.
(5) Provision may be made by rules as to the manner of claiming a right topriority on the basis of any such application.
(6) A right to priority arising as a result of any such application may be assigned or otherwise transmitted, either with the application orindependently; and the reference in subsection (1) to the applicant’s successor in title shall be construed accordingly.
(7) His Majesty the Sultan and Yang Di-Pertuan may by order make provision for conferring on a person who has filed an application for protectionof a trade mark in a country or territory in relation to which the Governmenthas entered into a treaty for the reciprocal protection of trade marks, a rightto priority, afford the purpose of registering the same trade mark under thisAct for some or all of the same goods or services, for a specified period fromthe date of filing of that application.
(8) An order under subsection (7) may make provisioncorresponding to that made by this section in relation to Paris Conventioncountries and World Trade Organisation countries or such other provision asappears to His Majesty the Sultan and Yang Di-Pertuan to be appropriate.
Temporary protection.
37. (1) The applicant for registration of a mark who has at an international exhibition falling within the terms of the Convention relating to International Exhibitions signed in Paris on 22nd. November, 1928, as revised or amended, exhibited goods bearing that mark or services rendered under that mark, and who has applied for registration of that mark within 6 months from the day on which the goods bearing that mark or those services were first so exhibited shall, on his request, be deemed to have applied for registration on that day.
(2) Evidence of the exhibition of such goods or services shall be given bya certificate issued by the competent authority of the exhibition, stating thedate on which the mark was first used in connection with those goods orservices.
(3) This section does not extend any other priority claimed by theapplicant.
Registration procedure
Examination of application.
38. (1) The Registrar shall examine whether an application for registration of a trade mark satisfies the requirements ofthis Act, including any requirements imposed by rules.
(2) For that purpose he shall carry out a search, to such extent as heconsiders necessary, of earlier trade marks.
(3) If it appears to the Registrar that the requirements for registrationhave not been met, he shall inform the applicant and give him an opportunity,within such period as the Registrar may specify, to make representations or toamend the application.
(4) If the applicant fails to satisfy the Registrar that those requirements have been met, or to amend the application so as to meetthem, or fails to respond before the end of the specified period, the Registrarshall refuse to accept the application.
(5) If it appears to the Registrar that the requirements for registrationhave been met, he shall accept the application.
Publication and opposition proceedings.
39. (1) When an application for registration has been accepted, the Registrar shall cause the application to be published in the prescribed manner.
(2) Any person may, within the prescribed time from the date of publicationof the application, give written notice to the Registrar of oppositionto the registration. The notice shall be given in the prescribed manner, andshall include a statement of the grounds of opposition.
Withdrawal, restriction or amendment of application.
40. (1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application. Ifthe application has been published, the withdrawal or restriction shall also bepublished.
(2) In other respects, an application may be amended, at the request of theapplicant, only by correcting —
(a) the name or address of the applicant;
(b) errors of wording or of copying; or
(c) obvious mistakes,
and then only where the correction does not substantially affect the identityof the trade mark or extend the goods or services covered by theapplication.
(3) Provision may be made by rules for the publication of anyamendment which affects the representation of the trade mark, or the goods orservices covered by the application, and for the making of objections by anyperson claiming to be affected by it.
Registration.
41. (1) Where an application has been accepted under subsection (5)of section 38 and —
(a) no notice of opposition has been given within the period referredto in subsection (2) of section 39; or
(b) all opposition proceedings have been withdrawn or decided infavour of the applicant,
the Registrar shall register the trade mark, unless it appears to him, havingregard to matters coming to his notice since he accepted the application, thatit was accepted in error.
(2) A trade mark shall not be registered unless any fee prescribed for theregistration is paid within the prescribed period. If the fee is not paid withinthat period, the application shall be deemed to have been withdrawn.
(3) A trade mark when registered shall be registered as at the date offiling of the application for registration; and that date shall be deemed forthe purposes of this Act to be the date of registration.
(4) On the registration of a trade mark, the Registrar shall publish the registration in the prescribed manner and issue to the applicant acertificate of registration.
Registration: supplementary provisions.
42. (1) Provision may be made by rules as to —
(a) the division of an application for the registration of a trademark into several applications;
(b) the merging of separate applications or registrations;
(c) the registration of a series of trade marks.
(2) In paragraph (c) of subsection (1), a series of trade marksmeans a number of trade marks which resemble each other as to their materialparticulars and differ only as to matters of a non-distinctive character notsubstantially affecting the identity of the trade mark.
(3) Rules under this section may include provision as to —
(a) the circumstances in which, and conditions subject to which, thedivision, merger or registration of a series is permitted; and
(b) the purposes for which an application to which the rules apply isto be treated as a single application and those for which it is to be treated asa number of separate applications.
Duration, renewal and alteration of registered trade mark
Duration of registration.
43. (1) A trade mark shall be registered for a period of 10 yearsfrom the date of registration.
(2) Registration may be renewed in accordance with section 44 for furtherperiods each of 10 years.
Renewal of registration.
44. (1) The registration of a trade mark may be renewed at therequest of the proprietor, subject to payment of a renewal fee.
(2) Provision may be made by rules for the Registrar to inform theproprietor of a registered trade mark, before the expiry of the registration, ofthe date of expiry and the manner in which the registration may be renewed.
(3) A request for renewal must be made, and the renewal fee paid, beforethe expiry of the registration. Failing this, the request may be made and thefee paid within such further period of not less than 6 months as may beprescribed, in which case an additional renewal fee must also be paid withinthat period.
(4) Renewal shall take effect from the expiry of the previousregistration.
(5) If the registration is not renewed in accordance with this section, theRegistrar shall remove the trade mark from the register. Provision may be madeby rules for the restoration of the registration of a trade mark which has beenremoved from the register, subject to such conditions (if any) as may beprescribed.
(6) The renewal or restoration of the registration of a trade mark shall bepublished in the prescribed manner.
Alteration of registered trade mark.
45. (1) Subject to subsection (2), a registered trade mark shall notbe altered in the register during the period of registration or on renewal.
(2) The Registrar may, on the application of the proprietor, allow thealteration of a registered trade mark where the mark includes theproprietor’s name or address and the alteration is limited to alterationof that name or address and does not substantially affect the identity of themark.
(3) Provision shall be made by rules for the publication of any suchalteration and the making of objections by any person claiming to be affected byit.
Surrender, revocation and invalidity
Surrender of registered trade mark.
46. (1) A registered trade mark may be surrendered by the proprietorin respect of some or all of the goods or services for which it isregistered.
(2) Provision may be made by rules —
(a) as to the manner and effect of a surrender; and
(b) for protecting the interests of other persons having a right inthe registered trade mark.
Revocation of registration.
47. (1) The registration of a trade mark may be revoked on any ofthe following grounds —
(a) that within the period of 5 years following the date ofcompletion of the registration procedure it has not been put to genuine use inBrunei Darussalam, by the proprietor or with his consent, in relation to thegoods or services for which it is registered, and there are no proper reasonsfor non-use;
(b) that such use has been suspended for an uninterruptedperiod of 5 years, and there are no proper reasons for non-use;
(c) that, in consequence of acts or inactivity of the proprietor, ithas become the common name in the trade for a product or service for which it isregistered;
(d) that, in consequence of the use made of it by the proprietor orwith his consent in relation to the goods or services for which it isregistered, it is liable to mislead the public.
(2) For the purpose of subsection (1), use of a trade mark includes use ina form differing in elements which do not alter the distinctivecharacter of the mark in the form in which it was registered, and use in Brunei Darussalam includes affixing the trade mark to goods or to thepackaging of goods in Brunei Darussalam solely for export purposes.
(3) The registration of a trade mark shall not be revoked on the grounds mentioned in paragraphs (a) or (b) of subsection (1) if such use as is referred to in either of those paragraphs was commenced or resumed after the expiry of the 5 years period and before the application for revocation was made:
Provided that any such commencement or resumption of use after the expiry ofthe 5 years period, but within the period of 3 months before the making of theapplication, shall be disregarded unless preparations for the commencement orresumption began before the proprietor became aware that the application mightbe made.
(4) An application for revocation may be made by any person, and may bemade either to the Registrar or to the court, except that —
(a) if proceedings concerning the trade mark are pending in the court,the application must be made to the court; and
(b) if in any other case the application is made to the Registrar, hemay at any stage of the proceedings refer the application to the court.
(5) Where grounds for revocation exist in respect of only some of the goodsor services for which the trade mark is registered, revocation shall relate tothose goods or services only.
(6) Where the registration of a trade mark is revoked to any extent, therights of the proprietor shall be deemed to have ceased to that extent as from—
(a) the date of the application for revocation; or
(b) if the Registrar or court is satisfied that the grounds forrevocation existed at an earlier date, that date.
Grounds for invalidity of registration.
48. (1) The registration of a trade mark may be declared invalid onthe ground that the trade mark was registered in breach of section 6 or of anyof the provisions referred to in that section. Where the trade mark was registered in breach of paragraph (b) , (c) or (d) ofsubsection (1) of that section, it shall not be declared invalid if, inconsequence of the use that has been made of it, it has after registrationacquired a distinctive character in relation to the goods or services for whichit is registered.
(2) The registration of a trade mark may be declared invalid on the ground—
(a) that there is an earlier trade mark in relation to which theconditions set out in subsection (1), (2) or (3) of section 8 apply; or
(b) that there is an earlier right in relation to which the conditionset out in subsection (4) of section 8 is satisfied,
unless the proprietor of that earlier trade mark or other earlier right hasconsented to the registration.
(3) An application for a declaration of invalidity may be made by anyperson, and may be made either to the Registrar or to the court, except that—
(a) if proceedings concerning the trade mark are pending in the court,the application must be made to the court; and
(b) if in any other case the application is made to the Registrar, hemay at any stage of the proceedings refer the application to the court.
(4) In the case of bad faith in the registration of a trade mark, theRegistrar may apply to the court for a declaration of the invalidity of theregistration.
(5) Where the grounds of invalidity exist in respect of only some of thegoods or services for which the trade mark is registered, the trade mark shallbe declared invalid as regards only those goods or services.
(6) Where the registration of a trade mark is declared invalid to anyextent, the registration shall to that extent be deemed never to have beenmade:
Provided that this shall not affect transactions past and closed.
Effect of acquiescence.
49. (1) Where the proprietor of an earlier trade mark or otherearlier right has acquiesced for a continuous period of 5 years in the use of aregistered trade mark in Brunei Darussalam, being aware of that use, there shallcease to be any entitlement on the basis of that earlier trade mark or otherright —
(a) to apply for a declaration that the registration of the latertrade mark is invalid; or
(b) to oppose the use of the later trade mark as regards the goods orservices in relation to which it has been so used,
unless the registration of the later trade mark was applied for in badfaith.
(2) Where subsection (1) applies, the proprietor of the later trade mark isnot entitled to oppose the use of the earlier trade mark or, as the case may be,the exploitation of the earlier right, notwithstanding that the earlier trademark or right may no longer be invoked against his later trade mark.
Collective marks
Collective marks.
50. A collective mark is a mark distinguishing the goods or servicesof members of an association which is the proprietor of that mark from those ofother undertakings.
Application of Act to collective marks.
51. This Act applies to collective marks, subject to the FirstSchedule.
Certification marks
Certification marks.
52. A certification mark is a mark indicating that the goods orservices in connection with which it is used are certified by the proprietor ofthat mark in respect of origin, material, mode of manufacture of goods orperformance of services, quality, accuracy or other characteristics.
Application of Act to certification marks.
53. This Act applies to certification marks, subject to the Second Schedule.
PART II
Protection of Well-Known Trade Marks
Protection of well-known trade marks.
54. (1) References in this Act to a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark,including such a trade mark entitled to the benefits of the Paris Convention byvirtue of the World Trade Organisation Agreement are to the trade mark of aperson who —
(a) is a citizen of, is domiciled, ordinarily resident or has a rightof abode in, a Paris Convention country or a World Trade Organisationcountry; or
(b) is domiciled in, or has a real and effective industrial orcommercial establishment in, any such country,
whether or not that person carries on business, or has any goodwill, inBrunei Darussalam. References to the proprietor of such a trade mark shall beconstrued accordingly.
(2) Subject to section 49, the proprietor of a trade mark which is entitledto protection under the Paris Convention as a well-known trade mark is entitledto restrain by injunction the use in Brunei Darussalam of a trade mark which, orthe essential part of which, is identical or similar to his trade mark, inrelation to identical or similar goods or services, where the use is likely tocause confusion.
(3) Nothing in subsection (2) affects the continuation of any bonafide use of a trade mark begun before the commencement of this section.
Emblems etc.
National emblems etc. of Paris Convention and World Trade
Organisation countries.
55. (1) A trade mark which consists of or contains the flag of a Paris Convention country or a World Trade Organisation country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the Registrar that use of the flag in the manner proposed is permitted without such authorisation.
(2) A trade mark which consists of or contains the armorial bearings or anyother state emblem of a Paris Convention country or a World Trade Organisationcountry which is protected under the Paris Convention or the World TradeOrganisation Agreement shall not be registered without the authorisation of thecompetent authorities of that country.
(3) A trade mark which consists of or contains an official sign or hallmarkadopted by a Paris Convention country or a World Trade Organisationcountry and indicating control and warranty shall not, where the sign orhallmark is protected under the Paris Convention, be registered in relation togoods or services of the same, or a similar kind, as those in relation to whichit indicates control and warranty, without the authorisation of the competentauthorities of that country.
(4) The provisions of this section as to national flags and other stateemblems, and official signs or hallmarks, apply equally to anything which from aheraldic point of view imitates any such flag or other emblem, or sign orhallmark.
(5) Nothing in this section prevents the registration of a trade mark onthe application of a citizen of a country who is authorised to make use of astate emblem, or official sign or hallmark, of that country, notwithstandingthat it is similar to that of another country.
(6) Where by virtue of this section the authorisation of thecompetent authorities of a Paris Convention country or a World MadeOrganisation country is or would be required for the registration of a trademark, those authorities are entitled to restrain by injunction any use of themark in Brunei Darussalam without their authorisation.
Emblems etc. of certain international organisations.
56. (1) This section applies to —
(a) the armorial bearings, flags and other emblems; and
(b) the abbreviations and names,
of organisations of which the government or governments of one or more Paris Convention countries or World Trade Organisation countries aremembers.
(2) A trade mark which consists of or contains any such emblem,abbreviation or name which is protected under the Paris Convention or the WorldTrade Organisation Agreement shall not be registered without the authorisationof the organisation concerned, unless it appears to the Registrar that the useof the emblem, abbreviation or name in the manner proposed —
(a) is not such as to suggest to the public that a connection existsbetween the organisation and the trade mark; or
(b) is not likely to mislead the public as to the existence of aconnection between the user and the organisation.
(3) The provisions of this section as to emblems of an organisation applyequally to anything which from a heraldic point of view imitates any suchemblem.
(4) Where by virtue of this section the authorisation of anorganisation is or would be required for the registration of a trade mark, thatorganisation is entitled to restrain by injunction any use of the mark in BruneiDarussalam which was not authorised by it.
(5) Nothing in this section affects the rights of a person whose bonafide use of a trade mark began before the making of this Act.
Notification under Article 6 ter of Paris Convention.
57. (1) For the purpose of section 55, state emblems of a Paris Convention country or a World Trade Organisation country (other than thenational flag), and official signs or hallmarks, shall be regarded as protectedunder the Paris Convention or the World Trade Organisation Agreement (as thecase may be) only if, or to the extent that —
(a) that country has notified Brunei Darussalam in accordance withArticle 6 ter (3) of that Convention that it desires to protect that emblem,sign or hallmark;
(b) the notification remains in force; and
(c) Brunei Darussalam has not objected to it in accordance with Article 6 ter (4) or any such objection has been withdrawn.
(2) For the purpose of section 56, the emblems, abbreviations and names ofan organisation to which that section applies shall be regarded as protected under the Paris Convention or the World Trade Organisation Agreementonly if, or to the extent that —
(a) that organisation has notified Brunei Darussalam inaccordance with Article 6 ter (3) of that Convention that it desires to protectthat emblem, abbreviation or name;
(b) the notification remains in force; and
(c) Brunei Darussalam has not objected to it in accordance with Article 6 ter (4) or any such objection has been withdrawn.
(3) Notification under Article 6 ter (3) of the Paris Convention shall haveeffect only in relation to applications for registration made more than 2 monthsafter the receipt of the notification.
(4) The Registrar shall keep and make available for publicinspection, at all reasonable hours and free of charge, a list of —
(a) the state emblems and official signs or hallmarks; and
(b) the emblems, abbreviations and names of organisations, which areprotected under the Paris Convention by virtue of notification under Article 6ter (3).
Acts of agents or representatives
Acts of agents or representatives.
58. (1) The following provisions apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the mark in aParis Convention country.
(2) If the proprietor opposes the application, registration shall berefused.
(3) If the application (not being so opposed) is granted, theproprietor may —
(a) apply for a declaration of the invalidity of the registration;
or
(b) apply for the rectification of the register so as to substitute his name as the proprietor of the registered trade mark.
(4) The proprietor may (notwithstanding the rights conferred by this Act inrelation to a registered trade mark) restrain by injunction any use of the trademark in Brunei Darussalam which is not authorised by him.
(5) Subsections (2), (3) and (4) do not apply if, or to the extent that,the agent or representative justifies his action.
Time limit for application under section 58(3).
59. An application under paragraph (a) or (b) of subsection (3) of section 58 must be made within 3 years of the proprietor becoming aware of the registration; and no injunction shall be granted under subsection (4) of that section in respect of a use in which the proprietor has acquiesced for a continuous period of 3 years or more.
PART III
ADMINISTRATIVE AND OTHER SUPPLEMENTARY PROVISIONS
The register
The register.
60. (1) The Registrar shall maintain a Register of Trade Marks.
(2) There shall be entered in the register in accordance with this Act —
(a) registered trade marks;
(b) such particulars as may be prescribed of registrabletransactions affecting registered trade marks; and
(c) such other matters relating to registered trade marks as may beprescribed.
(3) The register shall be kept in such manner as may be prescribed, andprovision shall in particular be made for —
(a) public inspection of the register; and
(b) the supply of certified or uncertified copies, or extracts, ofentries in the register.
Rectification of register.
61. (1) Any person having a sufficient interest may apply for the rectification of an error in or omission from the register:
Provided that an application for rectification may not be made in respect ofa matter affecting the validity of the registration of a trade mark.
(2) An application for rectification may be made either to the
Registrar or to the court, except that —
(a) if proceedings concerning the trade mark are pending in the court,the application must be made to the court; and
(b) if in any other case the application is made to the Registrar, hemay at any stage of the proceedings refer the application to the court.
(3) Except where the Registrar or the court directs otherwise, the effectof rectification of the register is that the error or omission in question shallbe deemed never to have been made.
(4) The Registrar may, on request made in the prescribed manner by theproprietor of a registered trade mark, or a licensee, enter any change in hisname or address as recorded in the register.
(5) The Registrar may remove from the register matter appearing to him tohave ceased to have effect.
Powers and duties of Registrar
Power to require use of forms.
62. (1) The Registrar may require the use of such forms as he maydirect for any purpose relating to the registry of a trade mark or any other proceeding before him under this Act.
(2) The forms, and any directions of the Registrar with respect to theiruse, shall be published in the prescribed manner.
Information about applications and registered trade marks.
63. (1) After publication of an application for registration of atrade mark, the Registrar shall on request provide a person with suchinformation and permit him to inspect such documents relating to theapplication, or to any registered trade mark resulting from it, as may bespecified in the request, subject to any prescribed restrictions. Any requestmust be made in the prescribed manner and be accompanied by any fee that may be prescribed.
(2) Before publication of an application for registration of a trade mark,documents or information constituting or relating to the application shall notbe published by the Registrar or communicated by him to any person except—
(a) in such cases and to such extent as may be prescribed; or
(b) with the consent of the applicant; but subject tosubsection (3).
(3) Where a person has been notified that an application for registration of a trade mark has been made, and that the applicant will if the application is granted bring proceedings against him in respect of acts done after publication of the application, he may make a request under subsection (1) notwithstanding that the application has not been published, and that subsection shall apply accordingly.
Costs and security for costs.
64. (1) Provision may be made by rules empowering the Registrar, inany proceedings before him under this Act —
(a) to award any party such costs as he may considerreasonable; and
(b) to direct how and by what parties they are to be paid.
(2) Any such order of the Registrar may be enforced in the same way as anorder of the court.
(3) Provision may be made by rules empowering the Registrar, in such casesas may be prescribed, to require a party to proceedings before him to givesecurity for costs, in relation to those proceedings or to proceedings onappeal, and as to the consequences if security is not given.
Evidence before Registrar.
65. Provision may be made by rules —
(a) as to the giving of evidence in proceedings before the Registrar under this Act by affidavit or statutory declaration;
(b) conferring on the Registrar the powers of an examiner for the purpose of proceedings in the High Court as regards the examination ofwitnesses on oath and the discovery and production of documents; and
(c) applying in relation to the attendance of witnesses inproceedings before the Registrar the rules applicable to the attendance ofwitnesses before such an examiner.
Exclusion of liability in respect of official acts.
66. (1) The Registrar shall not be taken to warrant the validity ofthe registration of a trade mark under this Act or under any treaty to whichBrunei Darussalam is a party.
(2) The Registrar is not subject to any liability by reason of, or inconnection with, any examination required or authorised by this Act or any such treaty or any report or other proceedings consequent on suchexamination.
(3) No proceedings lie against any person appointed undersubsection (2) of section 3 in respect of any matter for which, by virtue ofthis section, the Registrar is not liable.
Legal proceedings and appeals
Registration prima facie evidence of validity.
67. In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register) the registration of a person as proprietor of a trade mark is prima facie evidence of the validity of the original registration and of any subsequent assignment or transfer of it.
Certificate of validity of contested registration.
68. (1) If in proceedings before the court the validity of theregistration of a trade mark is contested and it is found by the court that thetrade mark was validly registered, the court may give a certificate to thateffect.
(2) If the court gives such a certificate and in subsequent proceedings —
(a) the validity of the registration is again questioned; and
(b) the proprietor obtains a final order or judgment in hisfavour,
he is entitled to his costs unless the court directs otherwise. Thissubsection does not extend to the costs of an appeal on any suchproceedings.
Registrar’s appearance in proceedings involving register.
69. (1) In proceedings before the court involving an application for—
(a) the revocation of the registration of a trade mark;
(b) a declaration of the invalidity of the registration of a trademark; or
(c) the rectification of the register,
the Registrar is entitled to appear and be heard, and shall appear if sodirected by the court.
(2) Unless otherwise directed by the court, the Registrar may instead ofappearing submit to the court a statement in writing signed by him, givingparticulars of —
(a) any proceedings before him in relation to the matter in issue;
(b) the grounds of any decision given by him affecting it;
(c) the practice of the registry in like cases; or
(d) such matters relevant to the issues and within his knowledge asRegistrar as he thinks fit,
and the statement shall be deemed to form part of the evidence in theproceedings.
Appeals from Registrar.
70. (1) An appeal, to the court lies from any decision of theRegistrar under this Act, except as otherwise expressly provided by rules. Inthis subsection, “decision” includes any act of the Registrar madein exercise of a discretion vested in him by or under this Act.
(2) In addition to its powers under any other law, in any appeal the courthas the same discretionary powers as have been conferred upon the Registrar bythis Act.
Rules of court.
71. Subject to this Act, the Chief Justice may, with the approval ofHis Majesty the Sultan and Yang Di-Pertuan, make rules of court regulating thepractice and procedure in relation to appeals before the court or connectedtherewith, and the costs of such appeals:
Provided that rules of court made under the repealed Act and in force on thecommencement of this section shall remain in force and have effect as if theyhad been made under this Act, so far as they are not inconsistent with this Act,until other provision is made under this Act.
Fees, business hours etc.
Fees.
72. (1) There shall be paid in respect of applications andregistration and other matters under this Act such fees as may beprescribed.
(2) Provision may be made by rules as to —
(a) the payment of a single fee in respect of 2 or more matters;
and
(b) the circumstances (if any) in which a fee may be repaid or
remitted.
Business hours and business days.
73. (1) The Registrar shall by notice published in the Gazette give directions specifying the business hours of the registryfor the purpose of the transaction of business under this Act, and the dayswhich are business days for that purpose:
Provided that any rules relating to business hours and business days madeunder the repealed Act and in force on the commencement of this section shallcontinue in force and have effect as if they were directions made under this subsection, so far as they are not inconsistent with this Act, untildirections are made under this subsection.
(2) Business done on any day after the specified business hours, or on aday which is not a business day, shall be deemed to have been done on the nextfollowing business day; and where the time for doing anything under this Actexpires on a day which is not a business day, that time shall be extended to thenext following business day.
(3) Directions under this section may make different provision fordifferent classes of business.
Publication in Gazette .
74. Provision may be made by rules for the publication by theRegistrar in the Gazette of particulars of any application for theregistration of a trade mark (including a representation of the mark) and suchother information relating to trade marks as he thinks fit.
Trade mark agents
Recognition of agents.
* 75. (1) Except as otherwise provided by rules but subject to rulesto be made under section 76, any act required or authorised by this Act to bedone by or to a person in connection with the registration of a trade mark, orany procedure relating to a registered trade mark, may be done by or to an agentauthorised by that person in writing.
(2) Section 80 applies to an agent authorised under subsection (1).
* not yet in force.
Register of trade mark agents.
* 76. The Attorney General may, with the approval of His Majesty theSultan and Yang Di-Pertuan, make rules requiring the keeping by theRegistrar of a register of persons who act as agents for others for the purposeof applying for or obtaining the registration of trade marks, and withoutprejudice to the generality of this power such rules may contain provisionsregulating the registration of such persons, and may —
(a) require the payment of such fees as may be prescribed; and
(b) authorise in prescribed cases the erasure from the register of thename of any person registered in it, or the suspension of a person’sregistration:
Provided that this section does not affect any person who, on thecommencement of this section, had the special leave of the Registrar undersection 71 of the repealed Act in any particular case, until revoked by theRegistrar under this Act or until other provision has been made under thisAct.
Unregistered persons not to be described as registered trade markagents.
* 77. (1) An individual who is not a registered trade mark agentshall not —
(a) carry on a business (otherwise than in partnership) under any nameor other description which contains the words “registered trade markagent”; or
(b) in the course of a business, otherwise describe or holdhimself out, or permit himself to be described or held out, as aregistered trade mark agent.
(2) A partnership shall not —
(a) carry on a business under any name or other description whichcontains the words “registered trade mark agent”; or
* not yet in force.
(b) in the course of a business, otherwise describe or hold itselfout, or permit itself to be described or held out, as a firm of registered trademark agents,
unless all the partners are registered trade mark agents or the partnershipsatisfies such conditions as may be prescribed for the purposes of this section.
(3) A body corporate shall not —
(a) carry on a business (otherwise than in partnership) under any nameor other description which contains the words “registered trade markagent”; or
(b) in the course of a business, otherwise describe or hold itselfout, or permit itself to be described or held out, as a registered trade markagent,
unless all the directors of the body corporate are registered trade markagents or the body satisfies such conditions as may be prescribed for thepurposes of this section.
(4) Any person who contravenes this section is guilty of an offence andliable on conviction to a fine not exceeding $15,000.
Power to prescribe conditions etc. for mixed partnerships and bodiescorporate.
* 78. (1) The Attorney General may, with the approval of His Majestythe Sultan and Yang Di-Pertuan, make rules prescribing the conditions to besatisfied for the purposes of section 77 —
(a) in relation to a partnership where not all the partners arequalified persons; or
(b) in relation to a body corporate where not all the directors arequalified persons,
and imposing requirements to be complied with by such partnerships or bodiescorporate.
(2) The rules may include —
* not yet in force.
(a) the prescription of conditions as to the number or proportion ofpartners or directors who must be qualified persons;
(b) the imposition of requirements as to —
(i) the identification of qualified and unqualified persons in professional advertisements, circulars or letters issued by or with the consent of thepartnership or body corporate and which relate to its business; and
(ii) the manner in which a partnership or body corporate is to organise itsaffairs so as to secure that qualified persons exercise a sufficient degree ofcontrol over the activities of unqualified persons.
(3) Any person who contravenes any requirement imposed by such rules is guilty of an offence and liable on conviction to a fine not exceeding $15,000.
(4) In this section, “qualified person” means a registered trade mark agent.
Use of term “trade mark attorney”.
* 79. No offence is committed under section 19 of the Legal Profession Act (Chapter 132) by the use of the term “trade mark attorney” in reference to a registered trade mark agent.
Privilege for communications with registered trade mark agents.
* 80. (1) This section applies to communications as to any matterrelating to the protection of any trade mark or involving passing off.
(2) Any such communication —
(a) between a person and his trade mark agent; or
(b) for the purpose of obtaining, or in response to a request for,information which a person is seeking for the purpose of instructing his trademark agent,
* not yet in force.
is privileged from disclosure in legal proceedings in the same way as acommunication between a person and his advocate and solicitor or, as the casemay be, a communication for the purpose of obtaining, or in response to arequest for, information which a person is seeking for the purpose ofinstructing his advocate and solicitor.
(3) In subsection (2), “trade mark agent” means —
(a) a registered trade mark agent;
(b) a partnership entitled to describe itself as a firm of registeredtrade mark agents;
(c) a body corporate entitled to describe itself as a registered trademark agent; or
(d) any person authorised in writing under section 75.
Power of Registrar to refuse to deal with certain agents.
* 81. (1) The Attorney General may, with the approval of His Majestythe Sultan and Yang Di-Pertuan, make rules authorising the Registrar to refuseto recognise as an agent in respect of any business under this Act —
(a) a person who has been convicted of an offence under section 77;
(b) an individual whose name has been erased from and not restored to, or who is suspended from, the register of trade mark agents on the grounds of misconduct;
(c) a person who is found by the Registrar to have been guilty of suchconduct as would, in the case of an individual registered in the register oftrade mark agents, render him liable to have his name erased from the registeron the grounds of misconduct;
(d) a partnership or body corporate of which one of the partners ordirectors is a person whom the Registrar could refuse to recognise underparagraph (a) , (b) or (c) .
(2) The rules may contain such incidental and supplementary provisions as appear to the Attorney General to be appropriate, including the prescription of circumstances in which a person is or is not to be taken to have been guilty of misconduct.
* not yet in force.
PART IV
PROCEEDINGS RELATING TO IMPORTATION OF INFRINGING GOODS
Infringing goods may be detained.
82. (1) The proprietor of a registered trade mark, or a licensee,may give notice in writing to the Controller of Customs —
(a) claiming that he is the proprietor or, as the case may be, alicensee of such trade mark registered in respect of the goodsspecified in the notice; and
(b) requesting him to detain any infringing goods that are or at anytime come under customs control,
if the use of that trade mark in Brunei Darussalam in relation to those goodswould infringe his exclusive right to that use.
(2) A notice shall —
(a) contain such particulars in support of the request as may beprescribed in regulations made under section 106; and
(b) specify the period for which the notice is to be in force, whichperiod shall —
(i) not be longer than 5 years from the date of the notice;
or
(ii) if the registration of the trade mark will expire within 5 years fromthe date of the notice, expire not later than such date of expiry.
(3) The Controller of Customs shall, in relation to any notice —
(a) accept the notice if it complies with the requirements of this section and of regulations made under section 106, whereupon the goods to which it relates, unless they have been imported for private and domestic use, shall become prohibited goods for the purposes of the Customs Act (Chapter 36); or
(b) decline to accept the notice if it does not comply with suchrequirements,
and shall advise the claimant whether the notice has been accepted ornot.
(4) A notice accepted under paragraph (a) of subsection (3) remainsin force for the period specified in the notice unless —
(a) it is revoked by the claimant in writing; or
(b) the court orders, in proceedings under section 87, that it bedischarged.
(5) Nothing in this section applies in relation to any sign that has beenapplied to goods in any country other than Brunei Darussalam by or with theapproval of the proprietor of the registered trade mark to which that signrelates.
(6) Subject to any agreement subsisting between a registered user of a registered trade mark and the proprietor of that trade mark, a registered user shall be entitled to call upon the proprietor to give notice under subsection (1) in relation to that trade mark and, if the proprietor refuses or neglects to do so within 2 months of being so called upon, the registered user may give notice under that subsection as if he were the proprietor.
Determination whether goods are infringing goods.
83. (1) Where —
(a) a notice that has been accepted under paragraph (a) of subsection (3) of section 82 is in force; and
(b) an officer of customs forms the opinion that any goods that havebeen imported and are under customs control may be infringing goods,
he may conduct such investigation as he considers necessary to establishwhether or not the goods appear to be infringing goods.
(2) Where an officer of customs conducts an investigation, he may, subjectto section 84, require —
(a) the claimant; and
(b) any other person appearing to him to have an interest in thegoods,
to supply such information as he may specify within 10 days of being required to do so.
(3) Whether or not the officer of customs conducts an investigation, he shall make a determination whether or not the goods appear to beinfringing goods.
(4) Nothing in this section applies to any goods that have beenimported for private and domestic use.
Limitations on requirement to supply information.
84. (1) An officer of customs shall not require any person to supplyany information under subsection (2) of section 83 unless he believes that theinformation is necessary for the purpose of the investigation.
(2) Every person who is required to supply information shall have the sameprivilege in relation to the giving of the information as a witness has in anycourt.
(3) Where any person refuses or fails to supply information, the officer of customs may, subject to subsection (2) of this section, take that refusal or failure into account in making a determination under subsection (3) of section 83.
Notice of determination.
85. (1) An officer of customs who has made a determination under subsection (3) of section 83 shall cause written notice of thatdetermination to be served on —
(a) the claimant; and
(b) any other person appearing to him to have an interest in thegoods.
(2) Every notice required to be served under subsection (1) may be servedby —
(a) personal delivery; or
(b) posting it to the last known address of such claimant or otherperson.
(3) The detention of any goods under section 86 is not rendered illegal bya failure to serve notice under subsection (1) of this section.
Detention of infringing goods.
86. (1) Where an officer of customs has formed an opinion that any goods that have been imported and are under customs control may be goods to which a notice accepted under paragraph (a) of subsection (3) of section 82 relates, those goods shall forthwith be detained by him until —
(a) the Controller of Customs has been served with an order made inproceedings under subsection (1) of section 87 that the notice bedischarged;
(b) the Controller of Customs has been served with an order made inproceedings under subsection (2) of section 87 that the goods be released;
(c) any proceedings under subsection (3) of section 87 (including any appeal) have been determined by a decision that the goods are not infringing goods;
(d) any proceedings under subsection (3) of section 87 (including any appeal) have been abandoned; or
(e) 10 days have elapsed since notice was served under section 85 and the Controller of Customs has not been served with notice of proceedings brought under subsection (3) of section 87 by any person other than the importer or consignee,
whereupon the goods shall, subject to subsection (3) of this section, bereleased to the person entitled to them.
(2) The Controller of Customs may, in any particular case, extend theperiod referred to in paragraph (e) of subsection (1) of this section to20 days if he considers it appropriate to do so in all the circumstances.
(3) The Controller of Customs shall not release any goods under subsection(1) of this section unless —
(a) any other legal requirements as to importation of the goods havebeen met;
(b) any requirements prescribed in regulations made undersection 106 requiring the deposit of a security have been met; and
(c) the release of the goods would not be otherwise contrary to anylaw.
Proceedings in respect of infringing goods.
87. (1) Any person may apply to the court for an order that a noticeaccepted under subsection (3) of section 82 be discharged, and the court maymake such an order accordingly.
(2) Any person may apply to the court for an order that any goods detainedunder section 86 be released, and the court may make such an orderaccordingly.
(3) Any person may apply to the court for a decision whether or not anygoods the subject of a determination made under subsection (3) of section 83 areinfringing goods imported otherwise than for private and domestic use, and thecourt shall make such a decision accordingly.
(4) Notice of proceedings under subsection (3) of this section shall beserved on the Controller of Customs.
(5) In proceedings under subsection (3) of this section, the court shallissue directions as to the service of notice on any person having an interest inthe goods, and any such person is entitled —
(a) to appear in those proceedings, whether or not he was served withnotice under section 85; and
(b) to appeal against any order made in those proceedings,whether or not he appeared in the proceedings.
(6) No order made in proceedings under subsection (3) of thissection shall take effect until the end of the period within which notice of anappeal may be given or, if before the end of that period notice of appeal hasbeen given, until the final determination or abandonment of the proceedings onthe appeal.
Forfeiture of goods by consent.
88. Where any infringing goods have been detained by the Controller ofCustoms or an officer of customs, the importer or consignee of the goods may, bynotice in writing to the Controller of Customs, consent to the goods beingforfeited and, on the receipt of such notice, the goods shall thereupon beforfeited.
Powers of court.
89. (1) Where, in proceedings under subsection (3) of section 87,the court decides that any goods the subject of a determination undersubsection
(3) of section 83 are infringing goods imported otherwise than for privateand domestic use, it shall make an order that the goods be —
(a) forfeited;
(b) destroyed; or
(c) otherwise dealt with as it thinks fit.
(2) In considering what order should be made under subsection (1) of this section, the court shall have regard to —
(a) whether other remedies available in infringementproceedings would be adequate to compensate the claimant and to protect hisinterests; and
(b) the need to ensure that no infringing goods are dealt with in amanner that would adversely affect his interests.
(3) Where more than one person is interested in any infringinggoods, the court may direct that the goods be sold, or otherwise dealt with, andthe proceeds divided, or shall make such other order as it thinks fit.
(4) Where, in proceedings under subsection (3) of section 87, the court decides that any goods the subject of a determination under subsection (3) of section 83 are not infringing goods imported otherwise than for private and domestic use, it may make an order that any person who is a party to the proceedings pay such compensation as it thinks fit to the importer, consignee or owner of those goods.
Inspection of goods.
90. (1) An officer of customs shall, in respect of any goods incustoms control that are or may be the subject of —
(a) a notice given under section 82;
(b) an investigation under section 83; or
(d) proceedings under section 87,
allow any person claiming to have an interest in those goods or in an investigation under section 83, or in proceedings under section 87, inrelation to those goods, to inspect those goods.
(2) The person referred to in subsection (1) may —
(a) inspect the goods; and
(b) with the approval of an officer of customs, remove thegoods or a sample thereof to such place, for such period, and on such conditionsas the officer of customs may specify, for the purpose of inspecting them.
(3) Any person who wishes to inspect or remove any goods under this sectionshall give to an officer of customs not less than 72 hours notice of hisintention to do so.
Power of Controller of Customs to disclose information.
91. Where information relating to infringing goods, infringing material or infringing articles has been obtained by the Controller of Customs for the purposes of, or in connection with, the exercise of his functions under this Act or under any other law in relation to imported goods, he may authorise the disclosure of that information to facilitate the exercise by any person of any function in connection with the investigation or prosecution of an offence under section 94 of this Act or under the Merchandise Marks Act (Chapter 96).
Delegation of powers and duties.
92. (1) The Controller of Customs may, either generally or in a particular case, in writing, delegate to any officer of customs all orany of the powers and duties conferred or imposed on him by or under thisAct.
(2) No delegation under subsection (1) shall include the power to delegateunder that subsection.
(3) Subject to any general or special directions given or conditionsimposed by the Controller of Customs, the officer of customs to whom any poweror duty is delegated may exercise or perform that power or duty in the samemanner and with the same effect as if it had been conferred or imposed on himdirectly by this Act and not by delegation.
(4) Every officer of customs purporting to act under any delegation underthis section shall, in the absence of proof to the contrary, be presumed to beacting in accordance with the terms of the delegation.
(5) Any delegation under this section may be made to any specified personor to the holder or holders for the time being of any specified office or classof office.
(6) Every such delegation shall be revocable at will, and no suchdelegation shall prevent the exercise or performance of any power or duty by theController of Customs.
Protection of Government and officers of customs from liability.
93. (1) In respect of anything done, purported to have been done, oromitted to be done, in the exercise or performance of any power or duty undersections 82 to 92 or under regulations made under section 106, the Governmentshall not be liable to make good any loss sustained in respect of any goods byfire, theft, damage or other cause while such goods are in any customs warehouseor in the lawful custody or control of any officer of customs, unless such lossis caused by the wilful neglect or default of an officer of customs or of aperson employed by the Government in connection with the customs.
(2) In respect of anything done, purported to have been done, or omitted tobe done, as mentioned in subsection (1), no officer of customs or other personemployed by the Government in connection with the customs shall be liable tomake good any loss sustained in respect of any goods by fire, theft, damage orother cause while such goods are in any customs warehouse or in the lawfulcustody or control of such officer or any other officer of customs or person soemployed in connection with customs, unless such loss is caused by his wilfulneglect or default.
Offences
Unauthorised use of trade mark etc. in relation to goods.
94. (1) A person commits an offence who, with a view to gain forhimself or another, or with intent to cause loss to another, and without theconsent of the proprietor —
(a) applies to goods or their packaging a sign identical to, or likelyto be mistaken for, a registered trade mark;
(b) sells or lets for hire, offers or exposes for sale or hire ordistributes goods which bear, or the packaging of which bears, such a sign;or
(c) has in his possession, custody or control in the course of abusiness any such goods with a view to the doing of anything, by himself oranother, which would be an offence under paragraph (b) .
(2) A person commits an offence who, with a view to gain for himself oranother, or with intent to cause loss to another, and without the consent of theproprietor —
(a) applies a sign identical to, or likely to be mistaken for, aregistered trade mark to material intended to be used —
(i) for labelling or packaging goods;
(ii) as a business paper in relation to goods; or
(iii) for advertising goods;
(b) uses in the course of a business material bearing such a sign forlabelling or packaging goods, as a business paper in relation to goods, or foradvertising goods; or
(c) has in his possession, custody or control in the course of abusiness any such material with a view to the doing of anything, by himself oranother, which would be an offence under paragraph (b) .
(3) A person commits an offence who, with a view to gain for himself oranother, or with intent to cause loss to another, and without the consent of theproprietor —
(a) makes an article specifically designed or adapted for makingcopies of a sign identical to, or likely to be mistaken for, a registered trademark; or
(b) has such an article in his possession, custody or control in thecourse of a business,
knowing or having reason to believe that it has been, or is to be, used toproduce goods, or material for labelling or packaging goods, as a business paperin relation to goods, or for advertising goods.
(4) A person does not commit an offence under this section unless—
(a) the goods are goods in respect of which the trade mark isregistered; or
(b) the trade mark has a reputation in Brunei Darussalam and the useof the sign takes or would take unfair advantage of, or is or would bedetrimental to, the distinctive character or the repute of the trade mark.
(5) It is a defence for a person charged with an offence under this sectionto show that he believed on reasonable grounds that the use of the sign in themanner in which it was used, or was to be used, was not an infringement of theregistered trade mark.
(6) Any person guilty of an offence under this section is liable onconviction to imprisonment for a term not exceeding 10 years, a fine orboth.
Application of enforcement.
95. (1) Section 30 of the Merchandise Marks Act (Chapter 96) appliesin relation to the enforcement of section 94 of this Act as in relation to theenforcement of that Act.
(2) Any law which authorises the disclosure of information for the purpose of facilitating the enforcement of the Merchandise Marks Act (Chapter 96) shall apply as if section 94 of this Act were contained in that Act, and as if the powers of any person in relation to the enforcement of that section were powers under that Act.
Falsification of register etc.
96. (1) It is an offence for a person to make, or cause to be made,a false entry in the register of trade marks, knowing or having reason tobelieve that it is false.
(2) It is an offence for a person —
(a) to make or cause to be made anything falsely purporting to be acopy of an entry in the register; or
(b) to produce or tender, or cause to be produced or tendered, inevidence any such thing,
knowing or having reason to believe that it is false.
(3) Any person guilty of an offence under this section is liable onconviction to imprisonment for a term not exceeding 5 years, a fine notexceeding $50,000 or both.
Falsely representing trade mark as registered.
97. (1) Any person who makes a representation —
(a) with respect to a mark, not being a registered trade mark, to theeffect that it is a registered trade mark;
(b) with respect to a part of a registered trade mark, not being apart separately registered as a trade mark, to the effect that it is soregistered;
(c) to the effect that a registered trade mark is registered inrespect of any goods or services in respect of which it is notregistered; or
(d) to the effect that the registration of a trade mark gives anexclusive right to the use thereof in any circumstances in which, having regardto limitations entered on the register, the registration does not give thatright,
is guilty of an offence and liable on conviction to a fine not exceeding $10,000.
(2) For the purpose of this section, the use in Brunei Darussalam in relation to a trade mark of the word “registered”, or of any other word referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except —
(a) where that word is used in physical association with other wordsdelineated in characters at least as large as those in which that word isdelineated and indicating that the reference is to registration as a trade markunder the law of any country other than Brunei Darussalam, being a country underthe law of which the registration referred to is in fact in force;
(b) where that word (being a word other than the word “registered”) is of itself such as to indicate that the reference is to such registration; or
(c) where that word is used in relation to a mark registered as atrade mark under the law of any country other than Brunei Darussalamand in relation to goods to be exported to that country or to services for usein that country.
Counterfeiting trade mark used by another.
98. (1) Any person who counterfeits any trade mark used by any otherperson is guilty of an offence and liable on conviction to imprisonment for aterm not exceeding 5 years, a fine not exceeding $100,000 or both.
(2) A person shall be deemed to counterfeit a trade mark if he —
(a) without the consent of the proprietor of the trade mark,makes that trade mark or a mark so;
(b) nearly resembling that trade mark as to be calculated to deceive;or
(c) falsifies any genuine trade mark whether by alteration,addition, effacement or otherwise.
(3) In any prosecution under this section, the burden of proving theconsent of the proprietor shall lie on the defendant.
Making or possession of instrument for counterfeiting trade mark.
99. Any person who makes or has in his possession any die, plate or other instrument for the purpose of counterfeiting a trade mark, or has in his possession a trade mark for the purpose of denoting that any goods are the manufacture or merchandise of a person whose manufacture or merchandise they are not, or that they belong to a person to whom they do not belong, is guilty of an offence and liable on conviction to imprisonment for a term not exceeding 5 years, a fine not exceeding $100,000 or both.
Importing or selling etc. goods marked with counterfeit trademark.
100. Any person who imports, sells or exposes or has in his possessionfor sale or for any purpose of trade or manufacture any goods or thing to whicha counterfeit trade mark has been applied or to which a registered trade markhas been falsely applied, unless he proves that —
(a) having taken all reasonable precautions against committing anoffence under this section, he had, at the relevant time, no reason to suspectthe genuineness of the mark and on demand made by or on behalf of theprosecution, he gave all the information in his power with respect to thepersons from whom he obtained the goods or thing; or
(b) he had acted innocently,
is guilty of an offence and liable on conviction to imprisonment for a termnot exceeding 5 years, a fine not exceeding $10,000 for each goods or thing towhich the counterfeit trade mark has been applied or the registered trade markhas been falsely applied (but not to exceed in the aggregate $100,000), orboth.
Falsely applying registered trade mark to services.
101. Any person who falsely applies a registered trade mark toservices, unless he proves that he had acted innocently, is guilty of an offenceand liable on conviction to imprisonment for a term not exceeding 5 years, afine not exceeding $100,000 or both.
Unauthorised use of Royal arms etc.
102. (1) A person shall not without the authority of His Majesty the Sultan and Yang Di-Pertuan cause or permit to appear on a trademark used by him in connection with any business —
(a) a representation of the Emblem, Arms and Regalia of BruneiDarussalam, including the Royal Arms, State Crest, the Insignia of Royalty,armorial bearings and other insignia and emblems of Brunei Darussalam, or anydevice so closely resembling any of them as to be likely to deceive in suchmanner as to be likely to lead to the belief that he has been authorised to usethem or any of them;
(b) any name or thing which is a specified name or specified emblem as defined in section 2 of the Emblems and Names (Prevention of Improper Use) Act (Chapter 94).
(2) A person shall not without the authority of His Majesty theSultan and Yang Di-Pertuan, a member of the Royal family or theGovernment use or permit to be used in connection with any business any arms,device, emblem or title in such manner as to be likely to lead to the beliefthat he is employed by or supplies goods or services to His Majesty the Sultanand Yang Di-Pertuan, that member of the Royal family or, as the case may be, theGovernment.
(3) Contravention of subsections (1) or (2) may be restrained by injunctionin proceedings brought by —
(a) any person who is authorised to use the arms, device,emblem or title; or
(b) any person authorised by the Adat Istiadat Officer to take suchproceedings.
(4) Nothing in this section affects any right of any person who was, on thecommencement of this Act the proprietor of a trade mark containing any sucharms, device, emblem or title to continue to use that trade mark.
(5) Any person who imports, sells or exposes, or has in hispossession for sale or for any purpose of business or manufacture any goods orthing to which a trade mark bearing any matter prohibited by subsections
(1) or (2) has been applied is guilty of an offence and liable on convictionto imprisonment for a term not exceeding 5 years, a fine not exceeding $50,000or both, and shall forfeit any goods to which the trade mark bearing that matterhas been applied.
Offences committed by partnership and bodies corporate.
103. (1) Where a partnership is guilty of an offence under this Act,every partner, other than a partner who is proved to have been ignorant of or tohave attempted to prevent the commission of the offence, is also guilty of theoffence and liable to be proceeded against and punished accordingly.
(2) Where an offence under this Act committed by a body corporate is provedto have been committed with the consent or connivance of, or to be attributableto any neglect on the part of, a director, manager, secretary or other similarofficer of that body, or of a person purporting to act in any such capacity, he,as well as the body corporate, is also guilty of the offence and liable to beproceeded against and punished accordingly.
(3) In relation to a body corporate whose affairs are managed by itsmembers, “director”, in subsection (2), means any member of thatbody corporate.
Forfeiture of counterfeit goods etc.
Forfeiture.
104. (1) Where there has come into the possession of any person in connection with the investigation or prosecution of an offence under section 94 of this Act or under the Merchandise Marks Act (Chapter 96), or any offence involving dishonesty or deception —
(a) goods which, or the packaging of which, bear a signidentical to or likely to be mistaken for a registered trade mark;
(b) material bearing such a sign and intended to be used for labellingor packaging goods, as a business paper in relation to goods, or for advertisinggoods; or
(c) articles specifically designed or adapted for making copies ofsuch a sign,
that person may apply to the court under this section for an order for theforfeiture of those goods, material or articles.
(2) On an application under this section, the court shall make an order for the forfeiture of any goods, material or articles only if it is satisfied that an offence mentioned in subsection (1) has been committed in relation to those goods, material or articles.
(3) The court may infer for the purpose of this section that such anoffence has been committed in relation to any goods, material or articles if itis satisfied that such an offence has been committed in relation to goods,material or articles which are representative of them, whether by reason ofbeing of the same design, or part of the same consignment or batch, orotherwise.
(4) Subject to subsection (5), where any goods, material or articles areforfeited under this section they shall be destroyed in accordance with suchdirections as the court may give.
(5) On making an order under this section the court may, if itconsiders it appropriate to do so, direct that the goods, material or articlesto which the order relates shall (instead of being destroyed) be released, tosuch person as the court may specify, on condition that such person —
(a) causes the offending sign to be erased, removed orobliterated; and
(b) complies with any order to pay costs which has been made againsthim in the proceedings for the order for forfeiture.
PART V
MISCELLANEOUS AND GENERAL PROVISIONS
Burden of proving use of trade mark.
105. If in any civil proceedings under this Act a question arises asto what use has been made of a registered trade mark, it is for the proprietorto show the use that has been made of it.
Regulations and rules.
106. (1) The Attorney General may, with the approval of His Majesty the Sultan and Yang Di-Pertuan, make regulations for —
(a) prescribing all matters which are required or convenient to beprescribed by this Act, including the prescription of fees;
(b) generally for giving effect to the objects and purposes of this Act and for the due administration thereof.
(2) Such regulations may make different provision as respectsdifferent classes of case to which they apply, and may include suchincidental, consequential and supplementary provisions as the AttorneyGeneral considers necessary or expedient.
(3) The Attorney General may, with the approval of His Majesty the Sultan and Yang Di-Pertuan, make rules —
(a) for the purposes of any provision of this Act authorising themaking of rules with respect to any matter; and
(b) for prescribing anything required or convenient to beprescribed by this Act, including the prescription of fees,
and generally regulating practice and procedure under this Act:
Provided that rules made under the repealed Act and in force on thecommencement of this subsection shall remain in force and have effect as if theyhad been made under this Act, so far as they are not inconsistent with this Act,until other provision has been made under this Act.
(4) Without prejudice to the generality of subsection (3), such rules maymake provision —
(a) as to the manner of filing applications and other documents;
(b) requiring and regulating the translation of documents and thefiling and authentication of any translation;
(c) as to the service of documents;
(d) authorising the rectification of irregularities of procedure;
(e) prescribing time limits for anything required to be done inconnection with any proceeding under this Act;
(f) for the extension of any time limit so prescribed, orspecified by the Registrar, whether or not it has already expired.
Amendment of Third Schedule.
107. The Attorney General may, with the approval of His Majesty theSultan and Yang Di-Pertuan, by order published in the Gazette, amend theThird Schedule to make such further transitional provisions as he mayconsider necessary and expedient.
Transitional.
108. The Third Schedule has effect with respect to transitionalmatters, including the treatment of trade marks registered under the repealedAct, and applications for registration and other proceeding pending under therepealed Act, on the commencement of this Act.
FIRST SCHEDULE
COLLECTIVE MARKS
General.
(section 51)
1. This Act applies to collective marks, subject to the following provisions.
Signs of which a collective mark may consist.
2. In relation to a collective mark, the reference in subsection (1)of section 4 to distinguishing goods or services of one undertaking from thoseof other undertakings shall be construed as a reference to distinguishing goodsor services of members of the association which is the proprietor of the markfrom those of other undertakings.
Indication of geographical origin.
3. Notwithstanding paragraph (c) of subsection (1) of section 6, a collective mark may be registered which consists of signs orindications which may serve, in business, to designate the geographical originof the goods or services; but the proprietor of such a mark is not entitled toprohibit the use of the signs or indications in accordance with honest practicesin industrial or commercial matters.
Mark not to be misleading as to character or significance.
4. A collective mark shall not be registered if the public is liableto be misled as regards the character or significance of the mark; and theRegistrar may require that a mark in respect of which application has been madefor registration include some indication that it is a collectivemark. Notwithstanding subsection (2) of section 40, an application may be amended so as to comply with any such requirement.
Regulations governing use of collective mark.
5. (1) An applicant for registration of a collective mark must filewith the Registrar regulations governing the use of the mark.
(2) The regulations must specify the persons authorised to use the mark,the conditions of membership of the association and, where they exist, theconditions of use of the mark, including any sanctions against misuse. Furtherrequirements with which the regulations have to comply may be imposed byrules.
Approval of regulations etc.
6. (1) A collective mark shall not be registered unless theregulations governing the use of the mark —
(a) comply with sub-paragraph (2) of paragraph 5 of this Schedule and any further requirements imposed by rules; and
(b) are not contrary to public policy or to accepted principles ofmorality.
(2) Before the end of the prescribed period after the date of theapplication for registration of a collective mark, the applicant must file theregulations with the Registrar and pay the prescribed fee. If he does not do so,the application shall be deemed to have been withdrawn.
7. (1) The Registrar shall consider whether the requirementsmentioned in sub-paragraph (1) of paragraph 6 of this Schedule have beenmet.
(2) If it appears to the Registrar that those requirements have not been met, he shall inform the applicant and give him an opportunity, within such period as the Registrar may specify, to make representations or to file amended regulations.
(3) If the applicant fails to satisfy the Registrar that those requirements have been met, or to file regulations amended so as to meetthem, or fails to respond before the end of the specified period, the Registrarshall refuse the application.
(4) If it appears to the Registrar that those requirements, and the other requirements for registration, have been met, he shall accept theapplication and proceed in accordance with section 39.
8. The regulations shall be published and notice of opposition may begiven relating to the matters mentioned in sub-paragraph (1) of paragraph 6 ofthis Schedule. This is in addition to any other grounds on which the applicationmay be opposed.
Regulations to be open to inspection.
9. The regulations governing the use of a registered collective markshall be open to public inspection in the same way as the register.
Amendment of regulations.
10. (1) An amendment of the regulations governing the use ofa registered collective mark is not effective unless and until the amendedregulations have been filed with the Registrar and accepted by him.
(2) Before accepting any amended regulations, the Registrar may in any casewhere it appears to him expedient to do so cause them to be published.
(3) If he does so, notice of opposition may be given relating to thematters mentioned in sub-paragraph (1) of paragraph 6 of this Schedule.
Infringement: rights of authorised users.
11. Subsection (5) of section 13, subsection (2) of section 21, and sections 82 to 90 apply in relation to an authorised user of aregistered collective mark as in relation to a licensee of a trade mark.
12. (1) Notwithstanding section 31, this paragraph has effect with respect to the rights of an authorised user in relation to infringement ofa registered collective mark.
(2) An authorised user is entitled, subject to any agreement to thecontrary between him and the proprietor, to call on the proprietor of theregistered collective mark to take infringement proceedings in respect of anymatter which affects his interests.
(3) If the proprietor —
(a) refuses to do so; or
(b) fails to do so within 2 months after being called upon,
the authorised user may bring the proceedings in his own name as if he wasthe proprietor.
(4) Where infringement proceedings are brought by virtue of this paragraph,the authorised user may not, without the leave of the court, proceed with theaction unless the proprietor is either joined as a plaintiff or added as adefendant. Nothing in this sub-paragraph affects the granting of interlocutoryrelief on an application by an authorised user alone.
(5) A proprietor who is added as a defendant under sub-paragraph
(4) shall not be made liable for any costs in the action unless he takes partin the proceedings.
(6) In infringement proceedings brought by the proprietor of aregistered collective mark, any loss suffered or likely to be suffered by anyauthorised user shall be taken into account; and the court may give suchdirections as it thinks fit as to the extent to which the plaintiff is to holdthe proceeds of any pecuniary remedy on behalf of such user.
Grounds for revocation of registration.
13. Apart from the grounds of revocation provided for in section 47,the registration of a collective mark may be revoked on the ground —
(a) that the manner in which the mark has been used by the proprietorhas caused it to become liable to mislead the public;
(b) that the proprietor has failed to observe, or to secure theobservance of, the regulations governing the use of the mark; or
(c) that an amendment of the regulations has been made so that theregulations —
(i) no longer comply with sub-paragraph (2) of paragraph 5 of this Schedule and any further conditions imposed by rules; or
(ii) are contrary to public policy or to accepted principles ofmorality.
Grounds for invalidity of registration.
14. Apart from the grounds of invalidity provided for in section 48,the registration of a collective mark may be declared invalid on the ground thatthe mark was registered in breach of paragraph 4 or of sub-paragraph (1) ofparagraph 6, of this Schedule.
SECOND SCHEDULE
CERTIFICATION MARKS
General.
(section 53)
1. This Act applies to certification marks subject to the following provisions.
Signs of which a certification mark may consist.
2. In relation to a certification mark the reference in subsection (1)of section 4 to distinguishing goods or services of one undertaking from thoseof other undertakings shall be construed as a reference to distinguishing goodsor services which are certified from those which are not.
Indication of geographical origin.
3. Notwithstanding paragraph (c) of subsection (1) of section 6, a certification mark may be registered which consists of signs or indications which may serve in business, to designate the geographical origin of the goods or services; but the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters.
Name of proprietor’s business.
4. A certification mark shall not be registered if the proprietorcarries on a business involving the supply of goods or services of the kindcertified.
Mark not to be misleading as to character or significance.
5. A certification mark shall not be registered if the public isliable to be misled as regards the character or significance of the mark; andthe Registrar may require that a mark in respect of which application has beenmade for registration include some indication that it is a certification mark. Notwithstanding subsection (2) of section 40, an application may be amended so as to comply with any such requirement.
Regulations governing use of certification mark.
6. (1) An applicant for registration of a certification mark mustfile with the Registrar regulations governing the use of the mark.
(2) The regulations must indicate the person authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes. Further requirements with which the regulations have to comply may be imposed by rules.
Approval of regulations etc.
7. (1) A certification mark shall not be registered unless—
(a) the regulations governing the use of the mark —
(i) comply with sub-paragraph (2) of paragraph 6 of this Schedule and any further requirements imposed by rules; and
(ii) are not contrary to public policy or to accepted principles ofmorality; and
(b) the applicant is competent to certify the goods or services forwhich the mark is to be registered.
(2) Before the end of the prescribed period after the date of theapplication for registration of a certification mark, the applicant must filethe regulations with the Registrar and pay the prescribed fee. If he does not doso, the application shall be deemed to have been withdrawn.
8. (1) The Registrar shall consider whether the requirementsmentioned in sub-paragraph (1) of paragraph 7 of this Schedule have beenmet.
(2) If it appears to the Registrar that those requirements have not beenmet, he shall inform the applicant and give him an opportunity, within suchperiod as the Registrar may specify, to make representations or to file amendedregulations.
(3) If the applicant fails to satisfy the Registrar that those requirements have been met, or to file regulations amended so as to meetthem, or fails to respond before the end of the specified period, the Registrarshall refuse the application.
(4) If it appears to the Registrar that those requirements, and the other requirements for registration, have been met, he shall accept theapplication and proceed in accordance with section 39.
9. The regulations shall be published and notice of opposition may begiven relating to the matters mentioned in sub-paragraph (1) of paragraph 7 ofthis Schedule. This is in addition to any other grounds on which the applicationmay be opposed.
Regulations to be open to public inspection.
10. The regulations governing the use of a registered certificationmark shall be open to public inspection in the same way as the register.
Amendment of regulations.
11. (1) An amendment of the regulations governing the use ofa registered certification mark is not effective unless and until the amendedregulations have been filed with the Registrar and accepted by him.
(2) Before accepting any amended regulations, the Registrar may in any casewhere it appears to him expedient to do so cause them to be published.
(3) If he does so, notice of opposition may be given relating to thematters mentioned in sub-paragraph (1) of paragraph 7 of this Schedule.
Consent to assignment of registered certification mark.
12. The assignment or other transfer of a registered certificationmark is not effective without the consent of the Registrar.
Infringement: rights of authorised users.
13. Subsection (5) of section 13, subsection (2) of section 21, and sections 82 to 90 apply in relation to an authorised user of aregistered certification mark as in relation to a licensee of a trade mark.
14. In infringement proceedings brought by the proprietor of aregistered certification mark, any loss suffered or likely to be suffered by any authorised user shall be taken into account; and the court maygive such directions as it thinks fit as to the extent to which the plaintiff isto hold the proceeds of any pecuniary remedy on behalf of such user.
Grounds for revocation of registration.
15. Apart from the grounds of revocation provided for in section 47,the registration of a certification mark may be revoked on the ground—
(a) that the proprietor has begun to carry on such a business as ismentioned in paragraph 4 of this Schedule;
(b) that the manner in which the mark has been used by the proprietorhas caused it to become liable to mislead the public;
(c) that the proprietor has failed to observe, or to secure theobservance of, the regulations governing the use of the mark;
(d) that an amendment of the regulations has been made so that theregulations —
(i) no longer comply with sub-paragraph (2) of paragraph 6 of this Schedule and any further conditions imposed by rules; or
(ii) are contrary to public policy or to accepted principles of morality;or
(e) that the proprietor is no longer competent to certify the goods orservices for which the mark is registered.
Grounds for invalidity of registration.
16. Apart from the grounds of invalidity provided for in section 48,the registration of a certification mark may be declared invalid on the groundthat the mark was registered in breach of paragraph 4 or 5 or of sub- paragraph(1) of paragraph 7, of this Schedule.
THIRD SCHEDULE
TRANSITIONAL PROVISIONS
Introductory.
(section 108)
1. (1) In this Schedule, “existing registered mark”means a trade mark or certification trade mark registered under the repealed Actimmediately before the commencement of this Act.
(2) For the purpose of this Schedule —
(a) an application shall be treated as pending on thecommencement of this Act if it was made but not finally determined before suchcommencement; and
(b) the date on which that application was made shall be taken to bethe date of filing under the repealed Act.
Existing registered marks.
2. (1) Existing registered marks (whether registered in Part A or Part B of the register kept under the repealed Act) shall be transferred on the commencement of this Act to the register kept under this Act and have effect, subject to this Schedule, as if registered under this Act.
(2) Existing registered marks registered as a series in oneregistration under section 36 of the repealed Act shall be similarly registeredin the new register. Provision may be made by rules for putting such entries inthe same form as is required for entries made under this Act.
(3) In any other case, notes indicating that existing registered marks are associated with other marks shall cease to have effect on thecommencement of this Act.
3. (1) A condition entered on the former register in relation to an existing registered mark immediately before the commencement ofthis Act shall cease to have effect on such commencement.
(2) A disclaimer or limitation entered on the former register inrelation to an existing registered mark immediately before the commencement of this Act shall be transferred to the new register and haveeffect as if entered on the register in pursuance of section 15 of this Act.
Effects of registration: infringement.
4. (1) Sections 12, 13 and 14 of this Act apply in relation to anexisting registered mark as from the commencement of this Act and section 16 ofthis Act applies in relation to infringement of an existing registered mark committed after the commencement of this Act, subject to sub-paragraph (2).The repealed Act continues to apply in relation to infringements committedbefore such commencement.
(2) It is not an infringement of —
(a) an existing registered mark; or
(b) a registered trade mark of which the distinctive elements are thesame or substantially the same as those of an existing registered mark and whichis registered for the same goods or services,
to continue after such commencement any use which did not amount toinfringement of the existing registered mark under the repealed Act.
Infringing goods, material or articles.
5. Section 18 of this Act applies to infringing goods, material orarticles whether the order for delivery up was made before or after the commencement of this Act.
Rights and remedies of licensee or authorised user.
6. (1) Section 31 of this Act, applies to licences granted beforethe commencement of this Act, but only in relation to infringements committedafter such commencement.
(2) Paragraph 14 of the Second Schedule applies only in relation toinfringements committed after such commencement.
Co-ownership of registered mark.
7. Section 24 of this Act applies as from the commencement of this Actto an existing registered mark of which 2 or more persons were immediatelybefore such commencement registered as joint proprietors.
Assignment etc. of registered mark.
8. (1) Section 25 of this Act applies to transactions and events occurring after the commencement of this Act in relation to an existingregistered mark; and the repealed Act continues to apply in relation to transactions and events occurring before such commencement.
(2) Existing entries under section 50 of this Act shall be transferred onthe commencement of this Act to the register kept under this Act and have effectas if made under section 26 of this Act. Provision may be made by rules forputting such entries in the same form as is required for entries made under thisAct.
(3) An application for registration under section 50 of the repealed Actwhich was pending before the Registrar on the commencement of this Act shall betreated as an application for registration under section 26 of this Act andshall proceed accordingly. The Registrar may require the applicant to amend hisapplication so as to conform with the requirements of this Act.
(4) An application for registration made under section 50 of the repealedAct which had not been finally determined by the Registrar before thecommencement of this Act shall be dealt with under the repealed Act; andsub-paragraph (2) shall apply in relation to any resulting entry in theregister.
(5) Where before the commencement of this Act a person has becomeentitled by assignment or transfer to an existing registered mark but has not registered his title, any application for registration after suchcommencement shall be made under section 26 of this Act.
(6) In cases to which sub-paragraph (3) or (5) apply, subsection (3) of section 50 of the repealed Act continues to apply (and subsections (3) and (4) of section 26 of this Act do not apply) as regards the consequences of failing to register.
Licensing of registered mark.
9. (1) Section 29 and subsection (2) of section 30 of this Act applyonly in relation to licences granted after the commencement of this Act; and therepealed Act continues to apply in relation to licences granted before suchcommencement.
(2) Existing entries under section 38 of the repealed Act shall betransferred on the commencement of this Act to the register kept under this Actand have effect as if made under section 26 of this Act. Provision may be madeby rules for putting such entries in the same form as is required for entriesmade under this Act.
(3) An application for registration as a registered user which was pendingbefore the Registrar on the commencement of this Act shall be treated as anapplication for registration of a licence under subsection (1) of section 26 ofthis Act and shall proceed accordingly. The Registrar may require the applicantto amend his application so as to conform with the requirements of this Act.
(4) An application for registration as a registered user which had not beenfinally determined by the Registrar before the commencement of this Act shall bedealt with under the repealed Act; and sub-paragraph (2) shall apply in relationto any resulting entry in the register.
(5) Any proceedings pending on the commencement of this Act undersubsection (8) or (10) of section 38 of the repealed Act shall be dealt withunder the repealed Act and any necessary alteration made to the newregister.
Pending applications for registration.
10. (1) An application for registration of a mark under the repealedAct which was pending on the commencement of this Act shall be dealt with underthe repealed Act, subject as mentioned in sub-paragraphs (2) and (3), and ifregistered the mark shall be treated for the purposes of this Schedule as anexisting registered mark.
(2) The power of the Attorney General, with the approval of His Majesty theSultan and Yang Di-Pertuan, under subsection (3) of section 106 of this Act tomake rules generally regulating practice and procedure under this Act, and as tothe matters mentioned in subsection (2) of that section, is exercisable inrelation to such an application; and different provision may be made for suchapplications from that made for other applications.
(3) Section 34 of the repealed Act shall be disregarded in dealing afterthe commencement of this Act with an application for registration.
Conversion of pending application.
11. (1) In the case of a pending application for registration whichwas not advertised under section 27 of the repealed Act beforethe commencement of this Act, the applicant may give notice to the Registrarclaiming to have the registrability of the mark determined in accordance withthe provisions of this Act.
(2) The notice must be in the prescribed form, be accompanied by the appropriate fee and be given not later than 6 months after thecommencement of this Act.
(3) Notice duly given is irrevocable and has the effect that theapplication shall be treated as if made immediately after the commencement ofthis Act.
Duration and renewal of registration.
12. (1) Subsection (1) of section 43 of this Act applies in relationto the registration of a mark in pursuance of an application made after the commencement of this Act; and the repealed Act continues to apply inany other case.
(2) Subsection (2) of section 43, and section 44, of this Act apply wherethe renewal falls due on or after the commencement of this Act, and the repealedAct continues to apply in any other case. In either case it is immaterial whenthe fee is paid.
Pending application for alteration of registered mark.
13. An application under section 45 of the repealed Act whichwas pending on the commencement of this Act shall be dealt with under therepealed Act and any necessary alteration made to the new register.
Revocation for non-use.
14. (1) An application under section 47 of the repealed Act whichwas pending on the commencement of this Act shall be dealt with under therepealed Act and any necessary alteration made to the new register.
(2) An application under paragraph (a) or (b) of subsection(1) of section 47 of this Act may be made in relation to an existing registeredmark at any time after the commencement of this Act:
Provided that no such application for the revocation of the registration ofan existing registered mark registered by virtue of section 48 of the repealedAct may be made until more than 5 years after the commencement of this Act.
Application for rectification etc.
15. (1) An application under section 44 or 46 of the repealed Actwhich was pending on the commencement of this Act shall be dealt with under therepealed Act and any necessary alteration made to the new register.
(2) For the purpose of proceedings under section 48 of this Act as itapplies in relation to an existing registered mark, this Act shall be deemed tohave been in force at all material times:
Provided that no objection to the validity of the registration of an existingregistered mark may be taken on the ground specified in subsection (3) ofsection 8 of this Act.
Regulations as to use of certification marks.
16. (1) Regulations governing the use of an existing registered certification mark transmitted to the Registrar in pursuance ofsection 75 of the repealed Act shall be treated after the commencement of thisAct as if filed under paragraph 6 of the Second Schedule to this Act.
(2) Any request for amendment of regulations which was pending on thecommencement of this Act shall be dealt with under the repealed Act.
Certificate of validity of contested registration.
17. A certificate given before the commencement of this Act under section 61 of the repealed Act shall have effect as if given under subsection (1) of section 68 of this Act.
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