Transitional

(1) Notwithstanding the repeal of the Acts referred to in section 82 (1) of this Act, all trademarks registered in Belize pursuant to the United Kingdom Trade Marks Act, Cap. 213 R. E. 1980-1990 and any Rules made there under, in Subsidiary Legislation 1991 Edition, Volume V, Cap. 213 at page 2 shall, subject to subsections (2) and (3) of this section, be deemed to have been registered under this Act. (2) Trademarks registered pursuant to subsection (1) of this section, shall remain in force for the unexpired portion of the period of protection provided under this Act subject to the payment of the prescribed fees or renewal fees provided in this Act. 70 (3) A person who on the date of the entry into force of this Act has filed an application in the United Kingdom for the registration of a trade mark may, within 12 months of the entry into force of this Act, file an application for the registration of the same trade mark under this Act, and such application shall be accorded the filing date or priority date accorded to the application by the United Kingdom Patents Office. (4) Where, upon the entry into force of this Act, an application made under the United Kingdom Trade Marks Act, Cap. 213, R. E. 1980- 1990 and Rules made there under in Subsidiary Legislation 1991 Edition, Volume V, Cap. 213 at page 2, is pending in Belize, such application shall, notwithstanding the provisions of subsection (1) of this section, be dealt with under the said United Kingdom Trade Marks Act and Rules made there under, but the grant of registration shall be subject to this Act. (5) Notwithstanding subsection (1) of this section, the United Kingdom Trade Marks Act, Cap. 213 R. E. 1980-1990, shall continue to apply in so far as it is necessary to enable any person applying for the registration of a United Kingdom registered trade mark in Belize before this Act comes into force to do so, but any trade mark thus registered shall be deemed to have been registered under this Act. (6) On the commencement of this Act, all notices of the ownership by any person of a trade mark which were previously made under the Merchandise Marks Act, Cap. 209 R. E. 1980-1990, shall cease to have effect in Belize, and such trademarks shall be registered in accordance with this Act. (7) The Minister may by Order published in the Gazette make any further transitional or saving provisions which appear to him to be necessary or desirable. 71 SCHEDULE 1 TRADE MARKS ACT Collective Marks [Sections 2 (1) and 57] General 1. The provisions of this Act apply 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 section 2 (1) of this section (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings. Indication of geographical origin 3.-(1) Notwithstanding section 35(1)(c) of this Act, a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services. (2) However, 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 (in particular, by a person who is entitled to use a geographical name). 72 Trade Marks Mark not to be misleading as to character or significance 4.-(1) A collective mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular, if it is likely to be taken to be something other than a collective mark. (2) The Registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a collective mark, and notwithstanding section 17 (3) of this Act, 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 shall file with the Registrar regulations governing the use of the mark. (2) The regulations shall specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including any sanctions against misuse. (3) Further requirements with which the regulations have to comply may be imposed by Rules. Approval of regulations by Registrar 6.-(1) A collective mark shall not be registered unless the regulations governing the use of the mark, (a) comply with paragraph 5 (2) of these rules and any further requirements imposed by the rules; and (b) are not contrary to public policy or to accepted principles of morality. Trade Marks 73 (2) Before the end of the prescribed period after the date of the application for registration of a collective mark, the applicant shall file the regulations with the Registrar and pay the prescribed fee and if he does not do so, the application shall be deemed to be withdrawn. (3) The Registrar shall consider whether the requirements mentioned in subparagraph (1) of these rules are met. (4) If it appears to the Registrar that those requirements are not 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. (5) If the applicant fails to satisfy the Registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the Registrar shall refuse the application. (6) If it appears to the Registrar that those requirements, and other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 16 (publication, opposition proceedings and observations). (7) The regulations shall be published and notice of opposition may be given, and observations may be made, relating to the matters mentioned in this paragraph. Regulations to be open to inspection 7. The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the register. Amendment of regulations 8.-(1) An amendment of the regulations governing the use of a registered collective mark is not effective unless and until the 74 Trade Marks amended regulations are filed with the Registrar and accepted by him. (2) Before accepting any amendment regulations the Registrar may in any case where it appears to him expedient to do so cause them to be published. (3) If he does so, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 6(1) of these rules. Infringement: rights of authorised users 9. The following provisions apply in relation to an authorised user of a registered collective mark as in relation to a licence of a trade mark, (a) section 25 (5) of this Act (definition of infringement: unauthorised application of mark to certain material); (b) section 54 (2) of this Act (order as to disposal of infringing goods, material or articles: adequacy of other remedies); (c) section 74 of this Act (prohibition of importation of infringing goods, material or articles: request to the Comptroller of Customs). 10.-(1) The following provisions (which correspond to the provisions of section 43 of this Act (general provisions as to the rights of licensees in cases of infringement)) have effect as regards the right of an authorised user in relation to infringement of a registered collective mark. (2) An authorised user is entitled, subject to any agreement to the contrary between him and the proprietor, to call on the Trade Marks 75 proprietor to take infringement proceedings in respect of any matter which affects his interests. (3) If the proprietor, (a) refuses to do so; or (b) fails to do so within two months after being called upon, the authorised user may bring the proceedings in his own name as if he were the proprietor. (4) Where the infringement proceedings are brought by virtue of this paragraph, the authorised user may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant but this does not affect the granting of interlocutory relief on an application by an authorised user alone. (5) A proprietor who is added as a defendant as mentioned in subparagraph (4) shall not be made liable for any costs in the action unless he takes part in the proceedings. (6) In infringement proceedings brought by the proprietor of a registered collective mark, any loss suffered or likely to be suffered by authorised users shall be taken into account and the Court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users. Grounds for revocation of registration 11. Apart from the grounds of revocation provided for in section 46 of this Act, the registration of a collective mark may be revoked on the ground, 76 Trade Marks (a) that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 4 (1) of these regulations; (b) that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark; or (c) that an amendment of the regulations has been made so that the regulations, (i) no longer comply with paragraph 5 (2) of these regulations and any further conditions imposed by Rules; or (ii) are contrary to public policy or to accepted principles of morality. Grounds for invalidity of registration 12. Apart from the grounds of invalidity provided for in section 47 of this Act, the registration of a collective mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4 (1) or 6 (1) of these regulations. Trade Marks 77 SCHEDULE 2 TRADE MARKS ACT Certification Marks [Sections 2 (1) and 58] General 1. The provisions of this Act apply 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 section 2 (1) of this Act (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services which are certified from those which are not. Indication of geographical origin 3.-(1) Notwithstanding section 35(1)(c) of this Act, a certification mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services. (2) However, 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 (in particular, by a person who is entitled to use a geographical name). 78 Trade Marks Nature of proprietor’s business 4. A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified. Mark not to be misleading as to character or significance 5.-(1) A certification mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a certification mark. (2) The Registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a certification mark and notwithstanding section 17(3) of this Act 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 shall file with the Registrar regulations governing the use of the mark. (2) The regulations shall indicate who is 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. (3) Further requirements with which the regulations have to comply may be imposed by Rules. Approval of regulations by Registrar 7.-(1) A certification mark shall not be registered unless, Trade Marks 79 (a) the regulations governing the use of the mark, (i) comply with paragraph 6 (2) of these rules and any further requirements imposed by rules; and (ii) are not contrary to public policy or to accepted principles of morality; and (b) the applicant is competent to certify the goods or services for which the mark is to be registered. (2) Before the end of the prescribed period after the date of the application for registration of a certification mark, the applicant must file the regulations with the Registrar and pay the prescribed fee, and if he does not do so, the application shall be deemed to be withdrawn. (3) The Registrar shall consider whether the requirements mentioned in subparagraph (1) of this rule are met. (4) If it appears to the Registrar that those requirements are not 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. (5) If the applicant fails to satisfy the Registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the Registrar shall refuse the application. (6) If it appears to the Registrar that those requirements, and other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 16 of this Act (publication, opposition proceedings and observations). 80 Trade Marks (7) The regulations shall be published and notice of opposition may be given, and observations may be made, relating to the matters mentioned in this paragraph, in addition to any other grounds on which the application may be opposed or observations made. Regulations to be open to inspection 8. The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the register. Amendment of regulations 9.-(1) An amendment of the regulations governing the use of a registered certification mark is not effective unless and until the amended regulations are filed with the Registrar and accepted by him. (2) Before accepting any amendment regulations the Registrar may in any case where it appears to him expedient to do so cause them to be published. (3) If he does so, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 7 (1) of these rules. Consent to assignment of registered certification mark 10. The assignment or other transmission of a registered certification mark is not effective without the consent of the Registrar. Infringement: rights of authorised users 11. The following provisions apply in relation to an authorised user of a registered certification mark as in relation to a licence of a trade mark, Trade Marks 81 (a) section 25 (5) of this Act (definition of infringement: unauthorized application of mark to certain material); (b) section 54 (2) of this Act (order as to disposal of infringing goods, material or articles: adequacy of other remedies); (c) section 74 of this Act (prohibition of importation of infringing goods, material or articles: request to the Comptroller of Customs). 12. In infringement proceedings brought by the proprietor of a registered certification mark any loss suffered or likely to be suffered by authorized users shall be taken into account, and the Court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users. Grounds for revocation of registration 13. Apart from the grounds of revocation provided for in section 46 of this Act, 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 is mentioned in paragraph 4 of these rules; (b) that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 5 (1) of these rules; 82 Trade Marks (c) that the proprietor failed to observe, or to secure the observance of, the regulations governing the use of the mark; (d) that an amendment of the regulations has been made so that the regulations, (i) no longer comply with paragraph 6 (2) of these rules 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 or services for which the mark is registered. Grounds for invalidity of registration 14. Apart from the grounds of invalidity provided for in section 47 of this Act, the registration of a certification mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4, 5 (1) or 6 (3) of these rules.