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Section 40 of Trade Marks Act CAP 506: Certification trade marks

    

(1) A mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic from goods not so certified shall be registrable as a certification trade mark in Part A of the register in respect of those goods in the name, as proprietor thereof, of that person:
Provided that a mark shall not be so registrable in the name of a person who carries on a trade in goods of the kind certified.
(2) In determining whether a mark is adapted to distinguish, the court or the Registrar may have regard to the extent to which—
(a) the mark is inherently 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 adapted to distinguish in relation to the goods in question.
(3) Subject to the provisions of subsections (4), (5) and (6) of this section, and of sections 10 and 11, the registration of a person as proprietor of a certification trade mark in respect of any goods shall, if valid, give to that person the exclusive right to the use of the trade mark in relation to those goods, and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a person authorized by him under the regulations in that behalf using it in accordance therewith, uses a mark identical with it or so nearly resembling it as to be likely to deceive of 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 trade mark; or
(b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or by his authorisation under the relevant regulations to use the trade mark or to goods certified by the proprietor.
(4) The right to the use of a certification trade mark given 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 in any mode, in relation to goods to be sold or otherwise traded 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.
(5) The right to the use of a certification trade mark given by registration shall not be deemed to be infringed by the use of any such mark by any person—
(a) in relation to goods certified by the proprietor of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or another in accordance with his authorization under the relevant regulations has applied the trade 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 trade mark; or
(b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given 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 paragraph (a) shall not have effect in the case of use consisting of the application of any such mark to goods, notwithstanding that they are goods mentioned in that paragraph, if that application is contrary to the relevant regulations.
(6) Where a certification trade mark is one of two or more registered trade marks that are identical or nearly resemble each other, the use of any of those trade marks in exercise of the right to the use of that trade 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 trade marks.
(7) There shall be deposited at the office of the Registrar in respect of every trade mark registered under this section regulations for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods and to authorize the use of the trade mark, and may contain any order provisions that the Registrar may 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 authorize the use of the trade mark in accordance with the regulations); and regulations so deposited shall be open to inspection in the same manner as the register.
(8) A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the court.
(9) The provisions of the First Schedule shall have effect with respect to the registration of a mark under this section and to marks so registered.

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