The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of sections 3 and 70, be liable to be removed from the register:
| (a) |
is not capable of distinguishing within the meaning of section 9; or |
| (b) |
consists exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or of rendering of the services; or |
| (c) |
consists exclusively of a sign or an indication which has become customary in the current language or in the bona fide and established practices of the trade; |
| (3) |
a mark in relation to which the applicant for registration has no bona fide claim to proprietorship; |
| (4) |
a mark in relation to which the applicant for registration has no bona fide intention of using it as a trade mark, either himself or through any person permitted or to be permitted by him to use the mark as contemplated by section 38; |
| (5) |
a mark which consists exclusively of the shape, configuration, colour or pattern of goods where such shape, configuration, colour or pattern is necessary to obtain a specific technical result, or results from the nature of the goods themselves; |
| (6) |
subject to the provisions of section 36(2), a mark which, on the date of application for registration thereof, or, where appropriate, of the priority claimed in respect of the application for registration thereof, constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark within the meaning of section 35(1) of this Act and which is used for goods or services identical or similar to the goods or services in respect of which the trade mark is well-known and where such use is likely to cause deception or confusion; |
| (7) |
a mark the application for registration of which was made mala fide; |
| (a) |
mark which consists of or contains the national flag of the Republic or a convention country, or an imitation from a heraldic point of view, without the authorisation of the competent authority of the Republic or convention country, as the case may be, unless it appears to the registrar that use of the flag in the manner proposed is permitted without such authorisation; |
| (b) |
a mark which consists of or contains the armorial bearings or any other state emblem of the Republic or a convention country, or an imitation from a heraldic point of view, without the authorisation of the competent authority of the Republic or convention country, as the case may be; |
| (c) |
a mark which consists of or contains an official sign or hallmark adopted by the Republic or a convention country, or an imitation from a heraldic point of view, and which indicates control and warranty, in relation to goods or services of the same or a similar kind as those in relation to which it indicates control and warranty, without the authorisation of the competent authority of the Republic or convention country, as the case may be; |
| (d) |
a mark which consists of or contains the flag, the armorial bearings or any other emblem, or an imitation from a heraldic point of view, or the name, or the abbreviation of the name, of any international organisation of which one or more convention countries are members, without the authorisation of the organisation concerned, unless it appears to the registrar that use of the flag, armorial bearings, other emblem or imitation or the name or abbreviation in the manner proposed, is not such as to suggest to the public that a connection exists between the organisation and the mark, or is not likely to mislead the public as to the existence of a connection between the organisation and the proprietor of the mark: Provided that- |
| (i) |
paragraphs (b), (c) and (d) shall apply to a state emblem and an official sign or hallmark of a convention country and an emblem, the name, or the abbreviation of the name, of an international organisation only if and to the extent that— |
| (aa) |
the convention country or international organisation, as the case may be, has notified the Republic in accordance with Article 6ter of the Paris Convention that it desires to protect that emblem, official sign or hallmark, name or abbreviation, as the case may be; |
| (bb) |
such notification remains in force; and |
| (cc) |
the Republic has not objected to it in accordance with Article 6ter of the Paris Convention or any such objection has been withdrawn; |
| (ii) |
paragraph (b), (c) or (d) shall apply only in relation to applications for registration made more than two months after receipt of the notification referred to in paragraph (i)(aa); |
| (iii) |
paragraph (b) or (c) shall not prevent the registration of a trade mark by a citizen of any country who is authorised to make use of a state emblem or official sign or hallmark of that country, notwithstanding the fact that it is similar to that of another country; |
| (9) |
a mark which contains any word, letter or device indicating State patronage; |
| (10) |
a mark which contains any mark specified in the regulations as being for the purposes of this section a prohibited mark; |
| (11) |
a mark which consists of a container for goods or the shape, configuration, colour or pattern of goods, where the registration of such mark is or has become likely to limit the development of any art or industry; |
| (12) |
a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons; |
| (13) |
a mark which, as a result of the manner in which it has been used, would be likely to cause deception or confusion; |
| (14) |
subject to the provisions of section 14, a mark which is identical to a registered trade mark belonging to a different proprietor or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of which such trade mark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trade mark consents to the registration of such mark; |
| (15) |
subject to the provisions of section 14 and paragraph (16), a mark which is identical to a mark which is the subject of an earlier application by a different person, or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of which the mark in respect of which the earlier application is made, would be likely to deceive or cause confusion, unless the person making the earlier application consents to the registration of such mark; |
| (16) |
a mark which is the subject of an earlier application as contemplated in paragraph (15), if the registration of that mark is contrary to existing rights of the person making the later application for registration as contemplated in that paragraph; |
| (17) |
a mark which is identical or similar to a trade mark which is already registered and which is well-known in the Republic, if the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of deception or confusion, unless the proprietor of such trade mark consents to the registration of such mark: |
Provided that a mark shall not be refused registration by virtue of the provisions of paragraph (2) or, if registered, shall not be liable to be removed from the register by virtue of the said provisions if at the date of the application for registration or at the date of an application for removal from the register, as the case may be, it has in fact become capable of distinguishing within the meaning of section 9 as a result of use made of the mark.
Implementation of Geneva Conventions Act, 2012
