1986 Ed.]
Trade Marks
[CAP. 43
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DEFENSIVE TRADE MARKS
55. (1) (a) Where a trade mark consisting of an invented word or invented words, or a device or devices, or a combination of them, has become so exceptionally well known as respects any goods in respect of which it is registered and in relation to which it has been used that the use thereof in relation to other goods would be likely to detract from its distinctive character in respect of the first-mentioned goods, then, notwithstanding that such use would not be likely to be taken as indicating a connexion in the course of trade between those other goods and a person entitled to use the trade mark in relation to the first-mentioned goods and that the proprietor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods, and notwithstanding anything in section 37, the trade mark may, on the application in the prescribed manner of the proprietor registered in respect of the first-mentioned goods, be registered in his name in respect of those other goods as a defensive trade mark and, while so registered, shall not be liable to be taken off the register in respect of those other goods under section 37.
(b) In determining whether a trade mark is exceptionally well known and whether its use in relation to other goods would be likely to detract from its distinctive character in respect of the goods for which it is registered, the tribunal shall have regard to all related circumstances, including the length of time the trade mark has been in use, the extent to which it has become well known in relation to the goods in respect of which it is registered, the nature of those goods, and whether the notoriety of the mark is limited because of its use on goods that are not of wide distribution.
(2) The registered proprietor of a trade mark may apply for the registration thereof in respect of any goods as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods otherwise than as a defensive trade mark, or may apply for the registration thereof in respect of any goods otherwise than as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods as a defensive trade mark, in lieu in each case of the existing registration.
(3) Except as otherwise expressly provided in this section and in sections 56 and 57, the provisions of this Ordinance shall apply in respect of the registration of trade marks as defensive trade marks and of trade marks so registered as they apply in other cases.
56. A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registrations are in respect of different goods, be deemed to be, and shall be registered as, associated trade marks.
Defensive registration of trade marks. 1938 c. 22, s. 27(0) and (2).
1938 c. 22, s. 27(6).
Defensive trade marks to be registered as associated trade marks.
1938 c. 22, s. 27(3).
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