CHAPTER VII
RECTIFICATION AND CORRECTION OF THE REGISTER
Power to cancel or vary registration and to rectify the register46. (1) On application in the prescribed manner by any person aggrieved to the High Court Division or to the Registrar, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention of, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence 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, may apply in the prescribed manner to the High Court Division or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
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(3) The tribunal may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of the register.
(4) The High Court Division or the Registrar, of its or his own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub section (1) or sub section (2).
(5) 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.
Correction of register47. (1) The Registrar may, on application made in the prescribed manner by the registered proprietor,
(a) correct any error in the name, address or description of the registered proprietor of a trade mark;
(b) enter any change in the name, address or description of the person who is registered as proprietor of a trade mark;
(c) cancel the entry of a trade mark on the register;
(d) strike out any goods or classes of goods from those in respect of which a trade mark is registered;
(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 the trade mark.
(2) The Registrar may, on application made in the prescribed manner by a registered user of a trade mark, correct any error, or enter any change, in the name, address or description of the registered user.
Alteration of registered trade mark48. (1) The registered proprietor of a trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.
(2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.
(3) Where leave is granted under this section, the trade mark as altered shall be advertised in the prescribed manner, unless the application has already been advertised under sub-section (2).
Adaptation of entries in register to amended or substituted classification of goods49. (1) The Registrar shall not, in exercise of any power conferred on him under clause (a) of sub-section (2) of section 84, make any amendment of the register which would have the effect of adding any goods or classes of goods to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made or of antedating the registration of a trade mark in respect of any goods:
Provided that this sub-section shall not apply when the Registrar is satisfied that compliance therewith would involve undue complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person.
(2) A proposal so to amend the register shall be notified to the registered proprietor of the trade mark affected and advertised in the prescribed manner, and may be opposed before the Registrar by any person aggrieved on the ground that the proposed amendment contravenes the provisions of sub-section (1).
CHAPTER VIII
CERTIFICATION TRADE MARKS
Provisions of this Act applicable to certification trade marks50. Subject to the provisions of this Chapter, the other provisions of this Act except sections 6, 21, 22, 31, 32, 33, 36, 37, 38, 39, 40, 41, 42 and 43 and sub section (2) of section 45 shall apply to certification trade marks as they apply to trade marks.
Certification trade mark not to be registered in name of person trading in goods certified thereby51. A mark shall not be registrable as a certification trade mark in the name of a person who carries on a trade in goods of the kind certified.
Determination whether a mark is a certification trade mark52. In determining whether a mark is adapted to distinguish in accordance with the provisions of clause (b) of sub section
(1) of section 2, the tribunal may have regard to the extent to which-
(a) the mark is inherently so adapted to distinguish in relation to the goods in question; and
(b) by reason of the use of the mark or of any other circumstances, the mark is in fact so adapted to distinguish in relation to the goods in question.
Application for registration53. (1) An application for the registration of a mark as a certification trade mark shall be made to the Registrar in writing in the prescribed manner by the person proposed to be registered as the proprietor thereof, and accompanied by a draft of the regulations to be deposited under section 56.
(2) The provisions of section 14 shall have effect in relation to an application under this section as they have effect in relation to an application under the said section, except that for references therein to acceptance of an application there shall be substituted references to authorisation to proceed with the application.
(3) In dealing under the said provisions with an application under this section, the tribunal shall have regard to the like con¬siderations, so far as relevant, as if the application were an appli¬cation under section 14 and to any other considerations (not being matters within the competence of the Government under section 54) relevant to applications under this section, including the desirability of securing that a certification trade mark shall comprise some indication that it is a certification trade mark.
Consideration of application for registration by Government54. When authorisation to proceed with an application under section 53 has been given, the Registrar shall forward the application to the Government who shall consider the application with regard to the following matters, namely:
(a) whether the applicant is competent to certify the goods¬ in respect of which the mark is to be registered;
(b) whether the draft of the regulations to be deposited under section 56 is satisfactory;
(c) whether in all the circumstances the registration applied for would be to the public advantage;
and may either
(i) direct that the application shall not be accepted; or
(ii) direct the Registrar to accept the application and approve the said draft of the regulations either without modification and unconditionally or subject to any
conditions or limitations, or to any amendments or modification of the application or of the regulations, which it thinks requisite having regard to any of the said matters;
but, except in the case of a direction for acceptance and approval without modification and unconditionally, the Government shall not decide the matter without giving to the applicant an opportunity of being heard:
Provided that the Government may, at the request of the applicant made with the concurrence of the Registrar, consider the application with regard to any of the said matters before authorisation to proceed with the application has been given, so however that the Government shall be at liberty to reconsider any matter on which it has given a decision under this proviso if any amendment or modification is thereafter made in the application or in the draft of the regulations.
Opposition to registration55. (1) When an application has been accepted, the Registrar shall, as soon as may be thereafter, cause the application as accepted to be advertised in the prescribed manner, and the pro¬visions of section 15 shall have effect in relation to the registration of the mark as if the application had been an application under section 14:
Provided that, in deciding under the said provisions the tribu¬nal shall have regard only to the considerations referred to in sub section (3) of section 53, and a decision under the said pro¬visions in favour of the applicant shall be conditional on the determination in his favour by the Government under sub section (2) of this section of any opposition relating to any of the matters referred to in section 54.
(2) When notice of opposition is given relating to any of the matters referred to in section 54, the Government shall, after hearing the parties, if so required, and considering any evidence, decide whether, and subject to what conditions or limitations, or amendments or modifications, if any, of the application or of the regulations to be deposited under section 56, registration is, having regard to those matters, to be permitted.
Deposit of regulations governing the use of a certification trade mark56. (1) There shall be deposited at the Trade Marks Registry in respect of every mark registered as a certification trade mark regulations approved by the Government for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods and to authorise the use of the certification trade mark, and may contain any other provisions which the Government may by general or special order require or permit to be inserted therein (including provisions conferring a right of appeal to the Registrar against any refusal of the proprietor to certify goods or to authorise the use of the certification trade mark in accordance with the regula¬tions); and regulations so deposited shall be open to inspection in like manner as the register.
(2) The regulations so deposited may on the application of the registered proprietor be altered by the Registrar with the consent of the Government.
(3) The Government may cause such application to be advertised in any case where it appears to it expedient so to do, and where it does so, if within the time specified in the advertisement any person gives notice of opposition to the application, the Government shall not decide the matter without giving the parties an opportunity of being heard.
Right conferred by registration57. 13[* * *] Subject to the provisions of sections 25, 26 and 58, the registration of a person as proprietor of a certification trade mark in respect of any goods shall, give to that person the exclusive right to the use of the certification trade mark in relation to those goods, and, without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the mark or a person authorised by him in that behalf under the regulations deposited under section 56, using it in accordance therewith, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either¬-
(a) as being used as a certification trade mark; or
(b) to import a reference to some person having the right either as proprietor, or by his authorisation under the said regulations, to use the mark, or to goods certified by the proprietor.
(2) [Omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973).]
No infringement in certain circumstances58. (1) The right to the use of a certification trade mark given under section 57 by registration shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in in any place, in relation to goods to be exported to any market, or in any other circumstances, to which having regard to any such limitations, the registration does not extend.
(2) The said right to the use of a certification trade mark shall not be deemed to be infringed by the use of any such mark as aforesaid by any person¬-
(a) in relation to goods certified by the proprietor of the mark if, as to those goods or a bulk of which they form part, the proprietor or another in accordance with his authorisation under the relevant regulations has applied the mark and has not subsequently removed or obliterated it, or the proprietor has at any time expressly or impliedly consented to the use of the mark, or
(b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact that the goods are certified by the proprietor:
Provided that clause (a) shall not apply to the case of use consisting of the application of any such mark as aforesaid to any goods, notwithstanding that they are such goods as are mentioned in that clause if such application is contrary to the said regulations.
(3) Where a certification trade mark is one of two or more certification trade marks registered under this Act 14[* * *], which are identical or nearly resemble each other, the use of any of those marks in exercise of the right to the use of that mark given by registration, shall not be deemed to be an infringement of the right so given to the use of any other of those marks.
Cancellation or varying of registration59. (1) The Government may, on the application in the prescribed manner of any person aggrieved or on the recommendation of the Registrar, and after giving the proprietor an opportunity of opposing the application or recommendation, make such order as it thinks fit for expunging or varying any entry in the register relating to a certification trade mark, or for varying the deposited regulations, on any of the following grounds, namely:-
(a) that the proprietor is no longer competent, in the case of any of the goods in respect of which the mark is registered, to certify those goods;
(b) that the proprietor has failed to observe any provision of the deposited regulations to be observed on his part;
(c) that it is no longer to the public advantage that the mark should be registered;
(d) that it is requisite for the public advantage that, if the mark remains registered, the regulations should be varied;
(2) The Registrar shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made under sub section (1).
Costs not to be awarded in certain cases60. The Registrar shall have no power to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or to authorise the use of the mark.
Decisions of Government to be final61. Save as otherwise expressly provided in this Chapter, every decision of the Government under this Chapter shall be final.