94	

Government	Gazette	23	March	2012	

Act No. 1, 2012

No.	4907


INDUSTRIAL PROPERTY ACT, 2012

Removal when mark becomes generic name
177.
Where	 a	 registered	 trade	 mark	 is	 or	 contains	 matter	 which	 is	 not	 or	
no	 longer	 capable	 of	 distinguishing	 within	 the	 meaning	 of	 section	 134,	 any	 interested	
person	may	apply	to	the	Registrar	to	require	that	the	registered	owner	must	–
	

(a)	

disclaim	any	right	to	the	exclusive	use	of	such	matter;		or

	

(b)	

make	 such	 other	 disclaimer	 or	 endorsement	 as	 may	 be	 necessary	 for	
defining	the	rights	under	the	registration;		or

	

(c)	

remove	the	registration,

but,	any	such	disclaimer	or	endorsement	or	removal	does	not	affect	any	other	rights	of	the	
registered	owner	in	respect	of	the	trade	mark	except	as	arising	out	of	the	registration.
Procedure and effect of removal
178.	 (1)	
An	application	under	section	176	or	177	must	be	filed	with	the	
Registrar	in	the	form	and	manner	as	prescribed,	and	must	be	accompanied	by	a	statement	
setting	out	the	ground	or	grounds	on	which	the	applicant	relies	for	the	registration	to	be	
removed.
(2)	
An	 application	 for	 the	 removal	 of	 a	 trade	 mark	 from	 the	 register	 of	
	
marks,	 together	 with	 the	 statement	 setting	 out	 the	 ground	 or	 grounds	 on	 which	 the	
applicant	relies,	must,	in	the	prescribed	manner,	be	served	on	the	owner	of	the	mark.
(3)	
The	 owner	 has	 the	 right	 to	 submit,	 in	 the	 prescribed	 manner,	 to	 the	
	
Registrar	his	or	her	reply	to	the	application	for	the	removal	of	the	trade	mark.
(4)	
The	 parties	 must	 follow	 the	 procedure	 and	 submit	 such	 evidence	 as	
	
prescribed	 and	 the	 Registrar	 must,	 in	 the	 manner	 contemplated	 in	 section	 147,	 decide	
the	matter	and	determine	the	relief,	if	any,	to	be	granted.
(5)	
The	 Registrar	 may	 not	 remove	 a	 trade	 mark	 from	 the	 register	 if	 the	
	
owner	 of	 that	 mark	 can	 show	 that	 special	 circumstances	 in	 the	 trade	 existed	 which	
prevented	 the	 use	 of	 the	 mark	 and	 that	 there	 was	 no	 intention	 not	 to	 use	 the	 mark	 in	
respect	of	those	goods	or	services,	or	that	there	was	no	intention	to	abandon	the	use	of	
the	mark	in	respect	of	those	goods	or	services,	as	contemplated	in	section	176(2).
Invalidation of registration
179.	 (1)	
Any	 interested	 person	 may	 apply	 to	 the	 Tribunal	 for	 the	
invalidation	 of	 the	 registration	 of	 a	 trade	 mark	 on	 the	 ground	 that	 the	 requirements	 of	
section	131,	137	or	138	have	not	been	complied	with	or	are	no	longer	complied	with.
(2)	
An	 application	 under	 subsection	 (1)	 must	 be	 made	 in	 the	 prescribed	
	
manner	and	be	accompanied	by	a	statement	setting	the	ground	or	grounds	on	which	the	
applicant	relies	for	the	registration	to	be	invalidated.

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