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Register of trade marks.
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2.
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(1) There shall be kept at the Registrar’s office for the purposes of this Ordinance a book called the Register of Trade Marks, wherein shall be entered all registered trade marks with the names and addresses of their proprietors, notifications of assignments and transmissions, disclaimers, conditions, limitations, and such other matters relating to such trade marks as may from time to time be prescribed.
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Division of register into two parts.
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(2) The register shall be divided into two parts, to be called respectively Part A and Part B.
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(3) Part A of the register shall comprise all trade marks which may be registered or are incorporated in Part A of the register under the provisions of this Part of this Ordinance.
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Part A.
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(4) Part B of the register shall comprise all trade marks registered under Part III of this Ordinance, and all trade marks entered on or removed thereto under Part III of this Ordinance. * See section 3 of the Patents, Designs and Trade Marks (Neuchatel Agreement) Act.
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Part B.
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(5) The register shall be kept under the control and management of the Registrar.
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Trust not to be entered in register.
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3. There shall not be entered in the register any notice of any trust expressed, implied, or constructive, nor shall any such notice be receivable by the Registrar.
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Incorporation of existing register.
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4. The register of trade marks existing at the date of the commencement of this Ordinance shall be incorporated with and form part of Part A of the register. Subject to the provisions of sections 35 and 41 of this Ordinance, the validity of the original entry of any trade mark upon the registers so incorporated shall be determined in accordance with the law in force at the date of such entry, and such trade mark shall retain its original date, but for all other purposes it shall be deemed to be a trade mark registered under this Ordinance.
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Inspection of and extract from register.
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5. The register kept under this Ordinance shall at all convenient times be open to the inspection of the public, subject to such regulations as may be prescribed; and certified copies of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee.
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Trade marks must be for particular goods.
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6. A trade mark must be registered in respect of particular goods or classes of goods.
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Registrable trade marks.
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7. A registrable trade mark must contain or consist of at least one of the following essential particulars : –
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(a) the name of a company, individual, or firm represented in a special or particular manner ;
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(b) the signature of the applicant for registration or some predecessor in his business ;
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(c) an invented word or invented words;
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(d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname ;
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(e) any other distinctive mark; but a name, signature, or word or words, other than such as fall within the descriptions in the above paragraphs (a), (b), (c), and (d), shall not be registrable under the provisions of this paragraph, except upon evidence of its distinctiveness :
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Provided always that –
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(i) any special or distinctive word or words, letter, numeral, or combination of letters or numerals used as a trade mark by the applicant or his predecessors in business before the 25th day of March, 1889, which has continued to be used (either in its original form or with additions or alterations not substantially affecting the identity of the same) down to the date of the application for registration shall be registrable as a trade mark under this Ordinance;
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(ii) in respect of cotton piece goods no mark consisting of a line heading alone shall be registered, and no line heading shall be deemed to be distinctive in respect of such goods;
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(iii) no registration of a cotton mark, that is to say, a trade mark in respect of cotton yarn, sewing cotton, or cotton piece goods in classes 23 and 24 in the third schedule of the rules made under this Ordinance, and published in the Gazette of the 10th day of December, 1926, shall give any exclusive right to the use of any letter, numeral, line heading, or any combination thereof.
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For the purposes of this section “distinctive” shall mean adapted to distinguish the goods of the proprietor of the trade mark from those of other persons.
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In determining whether a trade mark is so adapted, the Registrar or the court may, in the case of a trade mark in actual use; take into consideration the extent to which such user has rendered such trade mark in fact distinctive for the goods with respect to which it is registered or proposed to be registered.
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Coloured trade marks.
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8. A trade mark may be limited in whole or in part to one or more specified colours, and in such case the fact that it is so limited shall be taken into consideration by the Registrar or the court having to decide on the distinctive character of such trade mark. If and so far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.
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Restriction on registration.
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9. It shall not be lawful to register as a trade mark or part of a trade mark any matter, the use of which would by reason of its being calculated to deceive or otherwise be disentitled to protection in a Court of Justice, or would be contrary to law or morality, or which in the opinion of the Registrar or the court is likely to offend the religious or racial susceptibilities of any community, or any scandalous design.
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| REGISTRATION OF TRADE MARKS |
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Application for registration.
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10.
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(1) Any person claiming to be the proprietor of a trade mark, who is desirous of registering the same, must apply in writing to the Registrar in the prescribed manner.
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(2) Subject to the provisions of this Ordinance, the Registrar may after such inquiry as he thinks fit refuse such application, or may accept it absolutely or subject to conditions, amendments, or modifications, or to such limitations, if any, as to mode or place of user or otherwise as he may think right to impose.
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(3) In case of any such refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving at the same, and such decision shall be subject to appeal to the court.
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(4) An appeal under this section shall be made in the prescribed manner, and on such appeal the court shall, if required, hear the applicant and the Registrar, and shall make an order determining whether, and subject to what conditions, amendments, or modifications, if any, or to what limitations, if any, as to mode or place of user or otherwise, the application is to be accepted.
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(5) Appeals under this section shall be heard on the materials so stated by the Registrar to have been used by him in arriving at his decision, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the Registrar other than those stated by him, except by leave of the court. Where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of costs on giving notice as prescribed.
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(6) The Registrar or the court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in connexion with the application, or may permit the applicant to amend his application upon such terms as the Registrar or court, as the case may be, may think fit.
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Advertisement of application.
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11. When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions and limitations, the Registrar shall, as soon as may be after such acceptance, cause the application as accepted to be advertised in the prescribed manner. Such advertisement shall set forth all conditions and limitations subject to which the application has been accepted:
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Provided that an application for the registration of a trade mark under section 7 (e) of this Ordinance may be advertised by the Registrar on receipt of such application and before acceptance.
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Opposition to registration.
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12.
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(1) Any person may, within the prescribed time from the date of the advertisement of an application for registration of a trade mark, give notice to the Registrar of opposition to such registration.
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(2) Such notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.
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(3) The Registrar shall send a copy of such notice to the applicant, and within the prescribed time after the receipt of such notice, the applicant shall send to the Registrar, in the prescribed manner, a counter-statement of the grounds on which he relies for his application, and, if he does not do so, he shall be deemed to have abandoned his application.
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(4) If the applicant sends such counter-statement, the Registrar shall furnish a copy thereof to the persons giving notice of opposition, and shall, after hearing the parties, if so required and considering the evidence, decide whether, and subject to what conditions, or what limitations as to mode or place of user or otherwise, registration is to be permitted.
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(5) The decision of the Registrar shall be subject to appeal to the court.
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(6) An appeal under this section shall be made in the prescribed manner, and on such appeal the court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions, if any, or what limitations, if any, as to mode or place of user or otherwise, registration is to be permitted.
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(7) On the hearing of any such appeal any party may either in the manner prescribed or by special leave of the tribunal bring forward further material for the consideration of the tribunal.
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(8) In proceedings under this section no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar other than those stated by the opponent as herein above provided except by leave of the court. Where any further grounds of objection are taken the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed.
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(9) In any appeal under this section, the court may, after hearing the Registrar, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity of such trade mark, but in such case the trade mark as so modified shall be advertised in the prescribed manner before being registered.
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(10) If a party giving notice of opposition or of appeal neither resides nor carries on business in Ceylon, the tribunal may require such party to give security for costs of the proceedings before it relative to such opposition or appeal, and in default of such security being duly given may treat the opposition or appeal as abandoned.
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Disclaimers
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13. If a trade mark contains parts not separately registered by the proprietor as trade marks, or if it contains matter common to the trade or otherwise of a non-distinctive character, the Registrar or the court, in deciding whether such trade mark shall be entered or shall remain upon the register, may require, as a condition of its being upon the register, that the proprietor shall disclaim any right to the exclusive use of any part or parts of such trade mark, or of all or any portion of such matter to the exclusive use of which they hold him not to be entitled, or that he shall make such other disclaimer as they may consider needful for the purpose of defining his rights under such registration :
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Provided always that no disclaimer upon the register shall affect any right of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.
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Date of registration.
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14. When an application for registration of a trade mark has been accepted and has not been opposed, and the time for notice of opposition has expired, or having been opposed, the opposition has been decided in favour of the applicant, the Registrar shall, unless the mark has been accepted in error, register the said trade mark, and the trade mark, when registered, shall be registered as of the date of receipt by the Registrar, of the application for registration, and such date shall be deemed for the purposes of this Ordinance to be the date of registration.
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Certificate registration
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15. On the registration of a trade mark the Registrar shall issue to the applicant a certificate in the prescribed form, of the registration of such trade mark under the hand of the Registrar.
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Non-completion registration
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16. Where registration of a trade mark is not completed within twelve months from the date of receipt by the Registrar, of the application, by reason of default on the part of the applicant, the Registrar may, after giving notice of the non-completion, to the applicant in writing in the prescribed manner, treat the application as abandoned, unless it is completed within the time specified in that behalf in such notice.
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Identical marks.
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17. Except by order of the court or in the case of trade marks in use before the 25th day of March, 1889, no trade mark shall be registered in respect of any goods or description of goods which is identical with one belonging to a different proprietor, which is already on the register with respect to such goods or description of goods or so nearly resembling such a trade mark as to be calculated to deceive.
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Rival claim to identical marks.
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18.
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(1) Where each of several persons claims to be the proprietor of the same trade mark or of nearly identical trade marks in respect of the same goods or description of goods, and to be registered as such proprietor, the Registrar may refuse to register any of them until their rights have been determined by the court or have been settled by agreement in any manner approved by him or by the court.
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(2)
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(a) Such rights shall, unless it shall otherwise order, be submitted to the court for determination by a special case.
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(b) Such special case shall be subject to a stamp duty of two rupees, and shall be filed and proceeded with in like manner as any other special case submitted to the court, or in such other manner as the court may direct.
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(c) The special case may be agreed to by the claim-ants or, if they differ, may be settled by the Registrar on payment of the prescribed fee.
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Trade marks identical with those of persons belonging to Convention countries.
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19.
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(1) No trade mark-
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(a) which is identical with any other trade mark ; or
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(b) which so nearly resembles any other trade mark as to be calculated to deceive,
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shall be registered in respect of any goods or description of goods if, in the opinion of the court or the Registrar, such other trade mark is already well known in Ceylon as a trade mark used in respect of the same goods or same description of goods by any person within the jurisdiction of any Convention country (other than Ceylon).
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(2) For the purposes of this section, the expression ” Convention country” means any country which adheres to the Convention, and the expression ” Convention ” means the International Convention of the 20th day of March, 1883, for the creation of an International Union for the protection of Industrial Property, as revised from time to time.
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Concurrent user.
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20. In case of honest concurrent user or of other special circumstances which, in the opinion of the court or Registrar, make it proper so to do, the court or Registrar may permit the registration of the same trade mark, or of nearly identical trade marks, for the same goods or description of goods by more than one proprietor, subject to such conditions and limitations’, if any, as to mode or place of user or otherwise, as the court or Registrar may think it right to impose.
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Assignment and transmission of trade marks.
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21. A trade mark when registered shall be assigned and transmitted only in connexion with the goodwill of the business concerned in the goods for which it has been registered and shall be determinable with that goodwill. But nothing in this section contained shall be deemed to affect the right of the proprietor of a registered trade mark to assign the right to use the same in the United Kingdom or any British possession or protectorate or foreign country in connexion with any goods for which it is registered, together with the goodwill of the business therein in such goods ; and the assignment of such right to use the same shall constitute the assignee a proprietor of a separate trade mark for the purpose of section 20 of this Ordinance, subject to such conditions and limitations as may be imposed under that section.
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Apportionment of marks on dissolution of partnership.
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22. In any case where from any cause, whether by reason of dissolution of partnership or otherwise, a person ceases to carry on business, and the goodwill of such person does not pass to one successor but is divided, the Registrar may (subject to the provisions of this Ordinance as to associated trade marks), on the application of the parties interested, permit an apportionment of the registered trade marks of the person among the persons in fact continuing the business, subject to such conditions and modifications, if any, and to such limitations, if any, as to mode or place of user, as he may think necessary in the public interest. Any decision of the Registrar under this section shall be subject to appeal to the court.
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Associated trade marks.
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23. If application be made for the registration of a trade mark identical with or so closely resembling a trade mark of the applicant already on the register for the same goods or description of goods as to be calculated to deceive or cause confusion if used by a person other than the applicant, the Registrar or the court may require as a condition of registration that such trade marks shall be entered on the register as associated trade marks.
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Combined trade marks.
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24. If the proprietor of a trade mark claims to be entitled to the exclusive use of any portions of such trade mark separately, he may apply to register the same as separate trade marks. Each such separate trade mark shall satisfy all conditions and shall have all the incidents of an independent trade mark, except that when registered, it and the trade mark of which it forms a part shall be deemed to be associated trade marks and shall be entered on the register as such, but the user of the whole trade mark shall, for the purposes of this Ordinance be deemed to be also a user of such registered trade marks belonging to the same proprietor as it contains.
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Series of trade marks.
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25. When a person claiming to be the proprietor of several trade marks for the same description of goods, which, while resembling each other in the material particulars thereof, yet differ in respect of-
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(a) statements of the goods for which they are respectively used or proposed to be used ; or
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(b) statements of number, price, quality, or names of places; or
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(c) other matter of a non-distinctive character which does not substantially affect the identity of the trade mark ; or
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seeks to register such trade marks, they may be registered as a series in one registration. All the trade marks in a series of trade marks so registered shall be deemed to be, and shall be registered as, associated trade marks.
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Assignment and user of associated trade marks.
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26. Associated trade marks shall be assignable or transmissible only as a whole and not separately, but they shall for all other purposes be deemed to have been registered as separate trade marks :
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Provided that where under the provisions of this Ordinance user of a registered trade mark is required to be proved for any purpose, the Registrar or the court may, if and so far as is considered right, accept user of an associated registered trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for such user. .
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Duration of registration.
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27. The registration of a trade mark shall be for a period of fourteen years, but may be renewed from time to time in accordance with the provisions of this Ordinance.
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Renewal of registration.
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28. The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period, renew the registration of such trade mark for a period of fourteen years from the expiration of the original registration or of the last renewal of registration, as the case may be, which date is herein termed ” the expiration of the last registration “.
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Procedure on expiry of period of registration.
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29. At the prescribed time before the expiration of the last registration of a trade mark, the Registrar shall send notice in the prescribed manner, to the registered proprietor at his registered address, of the date at which the existing registration will expire and the conditions as to payment of fees and otherwise upon which a renewal of such registration may be obtained, and if at the expiration of the time prescribed in that behalf such conditions have not been duly complied with, the Registrar may remove such trade mark from the register, subject to such conditions, if any, as to its restoration to the register as may be prescribed.
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Status of unrenewed trade mark.
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30. Where a trade mark has been removed from the register for non-payment of the fee for renewal, such trade mark shall, nevertheless, for the purpose of any application for registration during one year next after the date of such removal, be deemed to be a trade mark which is already registered, unless it is shown to the satisfaction of the Registrar that there had been no bona fide trade user of such trade mark during the two years immediately preceding such removal.
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| CORRECTION AND RECTIFICATION OF THE REGISTER |
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Correction of register.
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31. The Registrar may, on request made in the prescribed manner by the registered proprietor or by some person entitled by law to act in his name-
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(a) correct any error in the name, address, or description of the registered proprietor. of a trade mark; or
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(b) enter any change in the name, address, or description of the person who is registered as proprietor of a trade mark ; or
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(c) cancel the entry of a trade mark on the register ; or
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(d) strike out any goods or classes of goods from those for which a trade mark is registered ; or
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(e) enter a disclaimer or memorandum relating to a trade mark which does not in any way extend the rights given by the existing registration of such trade mark.
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Any decision of the Registrar under this section shall be subject to appeal to the court.
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Registration of assignments, &c.
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32.
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(1) Where a person becomes entitled by assignment, transmission, or other operation of law, to a registered trade mark, he shall make application to the Registrar to register his title, and the Registrar shall, on receipt of such application and on proof of title to his satisfaction, register him as the proprietor of the trade mark, and shall cause an entry to be made in the prescribed manner on the register of the assignment, transmission, or other instrument affecting the title. Any decision of the Registrar under this section shall be subject to appeal to the court.
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(2) Except in cases of appeals under this section and applications made under section 34 of this Ordinance, a document or instrument in respect of which no entry has been made in the register in accordance with the provisions of subsection (1) aforesaid shall not be admitted in evidence in any court in proof of the title to a trade mark, unless the court otherwise directs.
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Alteration of registered trade mark.
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33. The registered proprietor of any trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter such trade mark in any manner not substantially affecting the identity of the same, and the Registrar may refuse such leave or may grant the same on such terms and subject to such limitations as to mode or place of user, as he may think fit, but any such refusal or conditional permission shall be subject to appeal to the court. If leave be granted, the trade mark as altered shall be advertised in the prescribed manner.
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Rectification of register.
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34. Subject to the provisions of this Ordinance-
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(a) the court may on the application in the prescribed manner, of any person aggrieved by the non-insertion in or omission from the register, of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, make such order for making, expunging, or varying such entry, as it may think fit;
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(b) the court may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connexion with the rectification of the register;
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(c) in case of fraud in the registration or transmission of a registered trade mark, the Registrar may himself apply to the court under the provisions of this section;
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(d) any order of the court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner, who shall upon receipt of such notice rectify the register accordingly ;
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(e) in any proceedings for the retification of the register under this section, the court shall have power to direct a trade mark entered in Part A of the register to be removed to Part B of the register.
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Trade marks registered under previous Ordinances.
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35. No trade mark which is upon the register at the commencement of this Ordinance, and which under this Ordinance is a registrable trade mark, shall be removed from the register on the ground that it was not registrable under the enactments in force at the date of its registration. But nothing in this section contained shall subject any person to any liability in respect of any act or thing done before the commencement of this Ordinance to which he would not have been subject under the enactments then in force.
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Non-user of trade mark.
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36. A registered trade mark may, on the application to the court of any person aggrieved, be taken off the register in respect of any of the goods for which it is registered, on the ground that it was registered by the proprietor or a predecessor in title without any bona fide intention to use the same in connexion with such goods, and there has in fact been no bona fide user of the same in connexion therewith, or on the ground that there has been no bona fide user of such trade mark in connexion with such goods during the five years immediately preceding the application, unless in either case such non-user is shown to be due to special circumstances in the trade, and not to any intention not to use or to abandon such trade mark in respect of such goods.
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Removal from register of word trade marks used as names of patented articles.
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37.
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(1) Where in the case of an article or substance manufactured under any patent in force at or granted after the commencement of this Ordinance, a word trade mark registered under this Ordinance is the name or only practicable name of the article or substance so manufactured, all rights to the exclusive use of such trade mark, whether under the common law or by registration (and notwithstanding the provisions of section 41 of this Ordinance), shall cease upon the expiration or determination of the patent, and thereafter such words shall not be deemed a distinctive mark, and may be removed by the court, from the register on the application of any person aggrieved.
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(2) No word which is the only practicable name or description of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark, and any such word now or hereafter on the register may, notwithstanding section 41 of this Ordinance, be removed by the court, from the register on the application of any person aggrieved :
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Provided that –
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(a) the provisions of this subsection shall not apply where the mark is used to denote only the proprietor’s brand or make of such substance, as distinguished from the substance as made by others, and in association with a suitable and practicable name open to the public use ; and
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(b) in the case of marks registered before the commencement of this Ordinance, no application under this section for the removal of the mark from the register shall be entertained until after the expiration of four years from the commencement of this Ordinance.
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(3) The power to remove a trade mark from the register conferred by this section shall be in addition to and not in derogation of any other powers of the court in respect of the removal of trade marks from the register.
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Powers of registered proprietor.
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38. Subject to the provisions of this Ordinance-
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(a) the person for the time being entered in the register as proprietor of a trade mark shall, subject to any rights appearing from such register to be vested in any other person, have power to assign the same, and to give effectual receipts for any consideration for such assignment;
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(b) any equities in respect of a trade mark may be enforced in like manner as in respect of any other personal property.
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Rights of proprietor of trade mark.
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39. Subject to the provisions of section 41 of this Ordinance and to any limitations and conditions entered upon the register, the registration of a person as proprietor of a trade mark shall, if valid, give to such person the exclusive right to the use of such trade mark upon or in connexion with the goods in respect of which it is registered :
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Provided always that where two or more persons are registered proprietors of the same (or substantially the same) trade mark in respect of the same goods, no rights of exclusive user of such trade mark shall (except so far as their respective rights shall have been defined by the court) be acquired by any one of such persons as against any other by the registration thereof, but each of such persons shall otherwise have the same rights as if he were the sole registered proprietor thereof.
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Registration to be prima facie evidence of validity.
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40. In all legal proceedings relating to a registered trade mark (including applications under section 34 of this Ordinance) the fact that a person is registered as proprietor of such trade mark shall be prima facie evidence of the validity of the original registration of such trade mark and of all subsequent assignments and transmissions of the same.
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Registration to be conclusive after seven years.
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41. In all legal proceedings relating to a registered trade mark (including applications under section 34 of this Ordinance) the original registration of such trade mark shall after the expiration of seven years from the date of such original registration (or seven years from the passing of this Ordinance, whichever shall last happen) be taken to be valid in all respects unless such original registration was obtained by fraud, or unless the trade mark offends against the provisions of section 9 of this Ordinance :
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Provided that nothing in this Ordinance shall entitle the proprietor of a registered trade mark to interfere with or restrain the user by any person of a similar trade mark upon or in connexion with goods upon or in connexion with which such person has, by himself or by his predecessors in business, continuously used such trade mark from a date anterior to the user or registration, whichever is the earlier, of the first-mentioned trade mark, by the proprietor thereof or his predecessors in business, or to object (on such user being proved) to such person being put upon the register for such similar trade mark in respect of such goods under the provisions of section 20 of this Ordinance.
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Notwithstanding anything in this section, for the purposes of the computation of the period specified herein as the period after the expiration of which the original registration of a trade mark shall be taken to be valid in relation to any proceedings on an application made under section 34 of this Ordinance for the removal of such trade mark from the register on the ground that such trade mark was registered in contravention of the provisions of section 19 of this Ordinance, account shall not be taken and, account shall be deemed not to have been required or authorized to be taken at any time by or under this section, of the period or any part of the period commencing on the 3rd day of September, 1939, and ending on the 30th day of June, 1947.
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Unregistered trade mark.
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42. No person shall be entitled to institute any proceeding in any civil court to prevent, or to recover damages for, the infringement of an unregistered trade mark unless such trade mark was in use before the 25th day of March, 1889, and has been refused registration under this Ordinance. The Registrar may, on request, grant a certificate that such registration has been refused.
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Infringement.
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43. In any action or proceeding relating to a trade mark or trade name, the court shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get-up legitimately used by other persons.
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User of name, address, or description of goods.
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44. No registration under this Ordinance shall interfere with any bona fide use by a person, of his own name or place of business or that of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods.
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” Passing-off ” action.
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45. Nothing in this Ordinance contained shall be deemed to affect rights of action against any person for passing off goods as those of another person, or the remedies in respect thereof.
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Certificate of validity.
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46. In any legal proceeding in which the validity of the registration of a registered trade mark comes into question and is decided in favour of the proprietor of such trade mark, the court may certify the same, and if it so certifies, then in any subsequent legal proceeding in which such validity comes into question, the proprietor of the said trade mark on obtaining a final order or judgment in his favour shall have his full costs, charges, and expenses as between proctor and client, unless in such subsequent proceeding the court certifies that he ought not to have the same.
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Registrar to have notice of proceeding for rectification.
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47. In any legal proceeding in which the relief sought includes alteration or rectification of the register, the Registrar shall have the right to appear and be heard, and shall appear if so directed by the court. Unless otherwise directed by the court, the Registrar in lieu of appearing and being heard may submit to the court a statement in writing signed by him, giving particulars of the proceedings before him in relation to the matter in issue or of the grounds of any decision given by him affecting the same or of the practice of the office in like cases, or of such other matters relevant to the issues, and within his knowledge as such Registrar, as he shall think fit, and such statement shall be deemed to form part of the evidence in the proceeding.
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Applications to be stamped.
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48. Every application made to the court under section 34, 36 or 37 shall be subject to a stamp duty of two rupees.
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Stamp duties.
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49. The minimum stamp duties chargeable in the District Courts in civil proceedings under the provisions of the enactment for the time being in force relating to stamps shall, so far as the same may be applicable and except as herein otherwise provided, be charged in all proceedings in the court under this Ordinance. But in no case shall the Registrar be required to use any stamp or be charged with any stamp duty.
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Appeal.
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50. Every judgment or order by the District Court under this Ordinance shall be subject to an appeal to the Supreme Court, and such appeal shall be subject to the same rules which govern interlocutory appeals from District Courts ; and the minimum stamp duties chargeable in the Supreme Court under the provisions of the enactment for the time being in force relating to stamps shall, so far as the same may be applicable, be charged in all proceedings relating to or in connexion with such appeal.
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Costs of proceedings before court and Registrar.
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51.
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(1) In all proceedings before the court under this Ordinance, the costs of the Registrar shall be in the discretion of the court, but the Registrar shall not be ordered to pay the costs of any other of the parties.
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(2) In all proceedings before the Registrar under this Ordinance, the Registrar shall have power to award to any party such costs as he may consider reasonable, and to direct how and by what parties they are to be paid, and any such order may be filed in court, and thereupon such order may be enforced as if it were an order of the court.
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Mode of giving evidence.
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52.
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(1) In any proceeding under this Ordinance before the court or the Registrar, the evidence shall be given by affidavit in the absence of directions to the contrary, but, in any case in which the court or the Registrar shall think it right so to do, the court or the Registrar may take evidence viva voce in lieu of or in addition to evidence by affidavit.
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(2) In case any part of the evidence is taken viva voce, the Registrar may exercise the powers conferred on a commission appointed under the provision of the Commissions of Inquiry Act for compelling the attendance of witnesses and the production of documents and for administering oaths to all persons who shall be examined before them.
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Certified copies to be evidence.
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53. Printed or written copies or extracts purporting to be certified by the Registrar, of or from any document register, and other book filed or kept under this Ordinance in the said office, shall be admitted’ in evidence in all courts in Ceylon, and in all proceedings, without further proof or production of the originals.
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Certificate of Registrar to be evidence.
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54. A certificate purporting to be under the hand of the Registrar as to any entry, matter, or thing which he is authorized by this Ordinance or rules made thereunder, to make or do, shall be prima facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or not done.
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| POWERS AND DUTIES OF THE REGISTRAR OF TRADE MARKS |
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Exercise of discretionary power by Registrar.
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55. Where any discretionary or other power is given to the Registrar by this Ordinance or rules made thereunder, he shall not exercise that power adversely to the applicant for registration or the registered proprietor of the trade mark in question without (if duly required so to do within the prescribed time) giving such applicant or registered proprietor, an opportunity of being heard.
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Recognition of agents.
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56. Where by this Ordinance any act has to be done by or to any person in connexion with a trade mark or proposed trade mark or any procedure relating thereto, such act may under and in accordance with rules made under this Ordinance be done by or to an agent of such party duly authorized in the prescribed manner.
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Registrar may take directions of law officers.
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57. The Registrar may, in any case of doubt or difficulty arising in the administration of any of the provisions of this Ordinance, apply to the Attorney-General or Solicitor-General for directions in the matter.
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Power to make copies of damaged volumes of the register.
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58.
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(1) Whenever the Registrar is satisfied that any volume of the register has been so damaged as to render that volume incapable of being mended, he may cause a copy thereof to be made and authenticated in such manner as he may direct.
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(2) Any copy made and authenticated under the provisions of subsection (1) shall replace the volume of which it is a copy, and shall for all purposes be deemed to have the same legal force and effect as the volume which such copy replaces.
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(3) The Registrar shall cause every damaged volume of which a copy has been made under the provisions of subsection (1) to be preserved as long as it is reasonably practicable for any reference which may be necessary.
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Power to prepare and insert reconstructed folios in place of lost or mutilated or damaged folios in registers.
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59.
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(1) Whenever the Registrar, after due investigation, is satisfied that any folio of any volume of the register has been lost and cannot be recovered or that any such folio has been permanently mutilated or so obliterated or damaged as to render the entries or any material part of the entries therein illegible, he may cause a reconstructed folio to be prepared and inserted in the place formerly occupied by the lost folio, or in place of the mutilated or damaged folio, or in a copy of a volume prepared under section 58, as the case may be.
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(2) No folio shall be reconstructed as provided in subsection (1) except in accordance with rules providing-
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(a) for the evidence to be admitted and used by the Registrar in ascertaining the particulars originally contained in the lost or mutilated or damaged folio ;
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(b) for the giving of notice by the Registrar of the preparation of the reconstructed folio; and
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(c) for the lodging of objections by any person affected by any of the particulars contained in the reconstructed folio and for the inquiry into any such objections by the Registrar.
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(3) Where any folio has been reconstructed by the Registrar in accordance with the preceding provisions of this section, the Registrar shall authenticate the reconstructed folio in the prescribed manner and shall thereafter cause the reconstructed folio to be inserted in the appropriate volume of the register in the place formerly occupied by the lost folio or in place of the mutilated or damaged folio, or in a copy of a volume prepared under section 58, as the case may be ; and the reconstructed folio, when so authenticated and inserted, shall for all purposes be deemed to have the same legal effect as the folio which such reconstructed folio replaces.
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Power to make rules.
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60.
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(1) The Minister1 may from time to time make such rules, prescribe such forms, and generally do such things as he thinks expedient-
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(a) for regulating the practice and procedure under this Ordinance;
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(b) for classifying goods for the purposes of registration of trade marks;
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(c) for prescribing the fees payable in respect of applications and registrations and other matters under this Ordinance, and the mode of payment of the same ;
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(d) for making or requiring duplicates of trade marks and other documents ;
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(e) for securing and regulating the publishing and selling or distributing of copies of trade marks and other documents ;
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(f) for regulating the business of the office in relation to trade marks and all things by this Ordinance placed under the direction or control of the Registrar ;
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(g) generally, for the purpose of carrying out the provisions of this Ordinance.
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(2) Rules made under this section shall be published in the Gazette, and shall thereupon be of the same effect as if they were contained in this Ordinance.
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(3) Any rules made in pursuance of this section shall be laid as soon as conveniently may be before the Senate and the House of Representatives,1 and may, at any of the three meetings of the Senate or the House of Representatives1 next succeeding such date, by resolution of the Senate or the House of Representatives1 be annulled, but without prejudice to anything that may have been done thereunder.
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Special trade marks.
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61. Where any association or person undertakes to certify the origin, material, mode of manufacture, quality, accuracy, or other characteristic of any goods, by mark used upon or in connexion with such goods, the Registrar, if and so long as he is satisfied that such association or person is competent to certify as aforesaid, may, if he shall judge it to be to the public advantage, permit such association or person to register such mark as a trade mark in respect of such goods, whether or not such association or person be a trading association or trader or possessed of a goodwill in connexion with such certifying. When so registered such trade mark shall be deemed in all respects to be a registered trade mark, and such association or person to be the proprietor thereof, save that such trade mark shall be transmissible or assignable only by permission of the Registrar.
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| INTERNATIONAL AND OTHER ARRANGEMENTS |
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International arrangements for protection of trade marks. (7 Edw. vii, c. 29.) (7 Edw. vii, c. 29.)
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62.
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(1) Any person who has applied for protection for any trade mark in the United Kingdom or in any-foreign state with the Government of which Her Majesty has made an arrangement under, or which has force as if it had been made under section 91 of the Patents and Designs Act, 1907, for the mutual protection of trade marks, shall, on application by himself or his heirs, executors, administrators, or assigns (subject to the provisions of this Ordinance as to the admissibility of trade marks to registration), be entitled to registration of his trade mark under this Ordinance in priority to other applicants ; and such registration shall have the same date as the application in the United Kingdom or such foreign state, as the case may be.
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(2) Such application shall be made within six months from such person applying for protection in the United Kingdom or in the foreign state with which the arrangement is in force.
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(3) Nothing in this section contained shall entitle the proprietor of a trade mark to recover damages for infringements happening prior to the date of the actual registration of his trade mark in Ceylon.
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(4) The use in Ceylon, during the period specified in this section as that within which the application may be made, of a trade mark during the period aforesaid shall not invalidate the registration of the trade mark.
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(5) The application for the registration of a trade mark under this section shall be made and dealt with in the same manner as an ordinary application under this Ordinance.
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(6) The provisions of this section shall apply only in the case of those foreign states with respect to which Her Majesty by Order in Council shall have declared that the provisions of section 91 of the Patents and Designs Act, 1907, or the corresponding provisions of any enactment repealed by such Act, are to be applicable, and so long only, in the case of each State as such Order continues in force with respect to that State.
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Provision for arrangements with British possessions, &c.
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63.
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(1) Whenever it appears to the Governor-General that the Legislature of any British possession or protectorate has made satisfactory provision for the protection in such possession, of trade marks registered in Ceylon, the Governor-General3 may, by Proclamation to be published in the Gazette apply all or any of the provisions of section 62 relating to the protection of trade marks registered in the United Kingdom, with such variations or additions, if any, as to the Governor-General [3] shall seem fit, to trade marks registered in such British possession.
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(2) A Proclamation under this section shall from a date to be mentioned in the Proclamation take effect as if its provisions had been contained in this Ordinance, but the Governor-General3 may revoke any such Proclamation.
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Falsification of entries in register.
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64. If any person makes or causes to be made a false entry in the register kept under this Ordinance, or a writing falsely purporting to be a copy of an entry in any such register, or produces, or tenders, or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of an offence, and punished with simple or rigorous imprisonment for a term not exceeding seven years.
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Penalty on falsely representing trade mark as registered.
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65.
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(1) Any person who represents a trade mark as registered, which is not so, shall be guilty of an offence, and liable on summary conviction to a fine not exceeding fifty rupees.
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(2) A person shall be deemed for the purposes of this Ordinance to represent that a trade mark is registered, if he uses in connexion with the trade mark the word ” registered “, or any word or words expressing or implying that registration has been obtained for the trade mark.
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Unauthorized assumption of Royal Arms. Unauthorized assumption of arms of the Ceylon Government. Saving.
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66.
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(1) If any person, without the authority of Her Majesty, uses in connexion with any trade, business, calling, or profession, the Royal Arms (or arms so closely resembling the same as to be calculated to deceive) in such manner as to be calculated to lead to the belief that he is duly authorized so to use the Royal Arms, or if any person without the authority of Her Majesty or of a member of the Royal Family, uses in connexion with any trade, business, calling, or profession any device, emblem, or title in such manner as to be calculated to lead to the belief that he is employed by, or supplies goods to, Her Majesty or such member of the Royal Family, he shall be guilty of an offence, and liable on summary conviction to a fine not exceeding one hundred rupees.
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(2) If any person, without the authority of the Governor-General8 uses in connexion with any trade, business, calling, or profession, the arms of the Ceylon Government (or arms so closely resembling the same as to be calculated to deceive) in such a manner as to be calculated to lead to the belief that he is duly authorized to use such arms, or if any person, without the authority of the Governor-General,[3] uses in connexion with any trade, business, calling, or profession, any device, emblem, or title in such a manner as to be calculated to lead to the belief that he is employed by or supplies goods to the Governor-General[3] or any member of the Governor-General’s’ family or the Ceylon Government, he shall be guilty of an offence and liable on summary conviction to a fine not exceeding one hundred rupees.
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(3) Nothing in this section contained shall be construed as affecting the rights, if any, of the proprietor of a trade mark containing any such arms, device, emblem, or title to continue to use such trade mark.
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Unauthorized use of name, title, seal, &c, of international organizations.
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67.
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(1) Any person who, in connexion with any trade, business, calling or profession, uses, without the consent of the appropriate authority, the name or any abbreviation of the name or the title, seal, emblem or device of any international organization to which this subsection applies, shall be guilty of an offence, and liable on summary conviction to a fine not exceeding one hundred rupees.
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(2) Subsection (1) shall apply to every international organization specified in that behalf by Order made by the Minister and published in the Gazette. The Minister shall in every such Order specify the officer or person who shall be the authority competent to give the consent referred to in that subsection.
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Use of religious pictures, names and titles.
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68.
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(1) Any person who-
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(a) uses a religious picture as a trade mark, or
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(b) in connexion with any trade, business, calling or profession and without the consent of the Minister, uses a religious picture otherwise than as a trade mark or uses a religious name or title whether as a trade mark or otherwise,
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shall be guilty of an offence and liable on summary conviction to a fine not exceeding one hundred rupees:
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Provided, however, that it shall not be an offence under the preceding provisions of this subsection if a religious picture or a religious name or title-
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(a) is used, whether as a trade mark or otherwise, in connexion with a trade or business in articles venerated by the followers of the religion with which such picture, name or title is associated, or
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(b) is made, printed or inscribed for sale or supply as an article of veneration, or
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(c) is set out in a publication which expounds matters relating to such religion or which is issued by or on behalf of an institution or organization controlled by persons who are followers of such religion, or
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(d) is made, printed or inscribed for any other purpose which the Minister may specify as an excepted purpose by Order published in the Gazette and in at least one Sinhalese newspaper, one Tamil newspaper and one English newspaper circulating in Ceylon.
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” calling” and ” profession” do not include a religious order ;
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” religious picture ” means a representation of-
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(a) the founder of a religion, or
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(b) a deity or saint venerated by the followers of a religion, or
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(c) an emblem or device associated with a religion; and
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“religious name or title” means such name or title as is associated with a religion.
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Offences non-cognizable and bailable.
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69. All offences under this Ordinance are hereby declared to be ” non-cognizable” and ” bailable”, within the meaning of those terms as defined in section 2 of the Criminal Procedure Code.
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