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Trademarks Act 2019


REPUBLIC OF NAURU
TRADEMARKS ACT 2019

_____________________________

No. 19 of 2019
______________________________


An Act to establish the legal framework for the registration and protection of trademarks and for related purposes


Certified: 12th July 2019
Table of Contents

PART 1 – PRELIMINARY
1 Short Title
2 Commencement
3 Act binds the Republic
4 Interpretation
5 Objective


PART 2 – REGISTRAR OF TRADEMARKS
6 Registrar of Trademarks
7 Register of Trademarks


PART 3 – REGISTRATION OF TRADEMARKS
8 Who may apply to register trademark
9 Application for registration
10 Notification of an application in the Gazette
11 Opposition to application
12 Registrar may refuse to register a trademark
13 Rejections of application
14 Acceptance for registration
15 Applicant to be notified for non-complying application
16 Amendment of pending application for registration
17 Notice of decision
18 Certificate of registration


PART 4 – EFFECT OF REGISTRATION
19 Effect of registration
20 Rights attached to a trademark
21 Conditions and limitations of registration
22 Rights and obligations of authorised user of trademark


PART 5 – TRADEMARKS THAT ARE NOT REGISTRABLE
23 Non distinctive trademark not registrable
24 Limitation as to colour
25 Trademark that contains protected geographical indication
26 Mark that contains commonly used chemical names
27 Mark that contains certain words
28 Mark that contains person’s name
29 Mark that contains representations of the President and Cabinet
30 Identical or similar mark
31 Mark that contains representation of flag


PART 6 – REFUSAL TO REGISTER A TRADEMARK
32 Trademark not distinguishing applicant’s goods or services
33 Trademark scandalous or its use is contrary to law
34 Identical Trademarks


PART 7 – DURATION, RENEWAL, SURRENDER, REMOVAL OF TRADEMARK
35 Duration of trademark
36 Application for renewal
37 Correction of Register
38 Surrender of trademark
39 Alteration of a trademark
40 Addition of goods or services
41 Removal for non-use of trademark
42 Rectification of Register


PART 8 – ASSIGNMENT OF TRADEMARK
43 Assignment of trademark
44 Application to register assignment of trademark
45 Recording assignment of trademark in Register
46 Notice of application to be given to person recorded claiming interest in trademark


PART 9 - COLLECTIVE TRADEMARKS
47 Collective Trademarks
48 Limitation on rights given by registered Collective Trademark
49 Infringement of Collective Trademark


PART 10 – INFRINGEMENT OF TRADEMARKS
50 Infringement of trademarks
51 Infringement of contractual requirements
52 Infringement of trademark by breach of restrictions
53 Trademark not infringed when used in good faith
54 Goods or services to which the registered trademark has been applied by or with consent of registered owner
55 Action for infringement


PART 11 – OFFENCES
56 Falsifying trademarks
57 False representation of trademarks
58 False entries in Register
59 Deceiving or influencing the Registrar
60 Forgery of trademarks


PART 12 – MISCELLANEOUS
61 Minister may authorise officers
62 Liability of Registrar or authorised officers
63 Jurisdiction of District Court
64 Barrister and solicitor or pleader may assist
65 Passing-off actions
66 Regulations
67 Repeal


Enacted by the Parliament of the Republic as follows:

PART 1 – PRELIMINARY

  1. Short Title

This Act may be cited as the Trademarks Act 2019.

  1. Commencement

This Act commences on certification by the Speaker.

  1. Act binds the Republic

This Act binds the Republic.

  1. Interpretation

In this Act:

‘applicant’ means a person who seeks an application for the registration of a mark or sign as a trademark;

‘assignment’ includes transfer or transmission of a trademark;

‘authorised user’ includes assignee;

‘condition’ includes a limitation of the exclusive right to use a trademark given by the registration of the trademark including a limitation of that right as to:

(a) mode of use;

(b) use in relation to goods to be sold or otherwise traded in the Republic;

(c) use in relation to services provided within the Republic; or

(d) use in relation to goods to be exported to any market outside the Republic.

‘deceptively similar’ means a trademark is taken to be deceptively similar to another trademark that is likely to deceive or cause confusion;

‘limitation’ means any limitation of the exclusive right to the use of a trademark given by a person at the time of registration as owner thereof, including limitations of that right as to mode of use and use in relation to goods to be sold or services to be performed;

‘mark’ includes a sign, slogan, device, brand, heading, label, ticket name, word, letter, numeral, aspect of packaging, shape, colour, sound, scent, hologram, motions, textures or any combinations thereof;

‘owner’ means:

(a) in relation to a trademark, the person in whose name the trademark is registered; or

(b) in relation to an unregistered trademark that is a well known trademark, the person to whom the unregistered mark belongs;

‘Register’ means the register of trademarks established under section 7;


‘Secretary’ means the Secretary for Justice;

‘sign’ includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof;

‘similar goods’ means goods are similar to other goods if they are the same as the other goods or if they are of the same description as that of the other goods;

‘similar services’ means services are similar to other services if they are similar as other services or if they are of the same description as that of the other services;

‘trade’ includes business or profession;

‘trademark’ means any mark which is registered under this Act and is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.


  1. Objective

The objective of this Act is to:

(a) provide a framework for the registration of trademarks;

(b) provide protection for registered trademarks;

(c) provide for the scope of rights protected by registered trademarks;

(d) provide for the management, ownership and use of trademarks;

(e) protect the consumers from being deceived by counterfeit goods and services marked with trademarks of the quality and origin of goods and services; and

(f) provide for the remedies, offences and penalties for breach of trademarks.

PART 2 – REGISTRAR OF TRADEMARKS

  1. Registrar of Trademarks
(5) The Minister may, on the recommendation of the Registrar appoint a Deputy Registrar.

(6) The Deputy Registrar may perform such functions and exercise such powers of the Registrar under this Act, as the Registrar may in writing from time to time direct or authorise him or her to perform or exercise.
  1. Register of Trademarks

PART 3 – REGISTRATION OF TRADEMARKS

  1. Who may apply to register trademark

A trademark may be registered by:


(a) the owner of the mark;

(b) a person authorised by the owner of the mark; or

(c) an assignee of the trademark under Part 8.
  1. Application for registration
  2. Notification of an application in the Gazette
  3. Opposition to application
  4. Registrar may refuse to register a trademark

The Registrar may decline an application to register a mark as a trademark on the grounds contained in Part 6 of this Act.

  1. Rejections of application

The Registrar shall reject an application for the registration of a mark as a trademark:

(a) which does not comply with Part 5;

(b) where the applicant fails to complete the registration process of the mark within 3 months of the date of lodging the application with the Registrar; or

(c) for any other reason he or she deems fit.
  1. Acceptance for registration
  2. Applicant to be notified for non-complying application

Where the Registrar considers that an application does not comply with the requirements of this Act, he or she shall:


(a) inform the applicant; and

(b) give the applicant an opportunity to respond or amend the application by correcting only those matters set out by the Registrar within the time specified.
  1. Amendment of pending application for registration
  2. Notice of decision

The Registrar shall within 90 days of the lodgement of the application:

(a) notify the applicant in writing of his or her decision; and

(b) publish his or her decision in the Gazette.
  1. Certificate of registration

The Registrar shall on the registration of a trademark:

(a) issue to the applicant a certificate of registration in the prescribed form; and

(b) publish in the Gazette the trademark with or without any conditions or limitations.

PART 4 – EFFECT OF REGISTRATION

  1. Effect of registration

A trademark is a property right obtained by the registration of the trademark under this Act.

  1. Rights attached to a trademark
  2. Conditions and limitations of registration

Where the trademark is registered subject to any conditions or limitations, the rights of the owner are restricted by such conditions or limitations.

  1. Rights and obligations of authorised user of trademark

PART 5 – TRADEMARKS THAT ARE NOT REGISTRABLE

  1. Non distinctive trademark not registrable
  2. Limitation as to colour
  3. Trademark that contains protected geographical indication

The Registrar shall not register a mark that:

(a) contains a protected geographical indication in respect of specified goods; or

(b) relates to specified goods that do not originate from the place indicated in the protected geographical indication.
  1. Mark that contains commonly used chemical names
  2. Mark that contains certain words

The Registrar may not register a mark that contains the words or any abbreviations to those words or any similar words:


(a) ‘copyright’;

(b) ‘layout’;

(c) ‘patent’;

(d) ‘patented’;

(e) ‘plant variety right’;

(f) ‘registered’;

(g) ‘registered design’; or

(h) ‘trademark’.
  1. Mark that contains person’s name

Where a person applies for the registration of a sign as a trademark and the sign contains the name or representation of a person, the Registrar may require the written consent of:

(a) that person unless the person died 10 years or more before the making of the application; or

(b) the person’s legal representative where;
  1. Mark that contains representations of the President and Cabinet

The Registrar shall not register a mark that contains a representation of the President or any member of the Cabinet or an imitation of any such representation.

  1. Identical or similar mark

The Registrar shall not register a mark in respect of any goods or services where:

(a) it is identical to a trademark that belongs to a different owner and that is registered or has priority under section 34 in respect of the same goods or services;

(b) it is similar to a trademark that belongs to a different owner and that is registered or has priority under section 34 in respect of the same goods or services that are similar to those goods or services and its use is likely to deceive; or

(c) it is or an essential element of it is identical or similar to or a translation of a trademark that is well known in the Republic whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of the trademark would be taken to indicate a connection in the course of trade between those other goods or services and the owner of the trademark and would be likely to prejudice the interests of the owner.
  1. Mark that contains representation of flag

Where a person applies for the registration of a mark which includes a representation of a flag, armorial bearing, insignia or decorations of any entity, the Registrar may require that the applicant obtains written consent as prescribed under the Naoero National Anthem Emblem and Flag Protection Act 2018 and under any written law or require the applicant to apply to such person who has authority to give such consent.

PART 6 – REFUSAL TO REGISTER A TRADEMARK

  1. Trademark not distinguishing applicant’s goods or services
  2. Trademark scandalous or its use is contrary to law

An application for the registration of a mark shall be rejected where:

(a) the mark contains or consists of scandalous matter;

(b) it is obscene, immoral or contrary to public order; or

(c) its use would be contrary to law.
  1. Identical Trademarks

the Registrar shall not reject the application on the basis of the existence of the other trademark.

PART 7 – DURATION, RENEWAL, SURRENDER, REMOVAL OF TRADEMARK

  1. Duration of trademark
  2. Application for renewal
  3. Correction of Register

The Registrar may on an application of the owner of a trademark:


(a) correct an error or omission in the name, address or description of the owner of the trademark;

(b) enter any change in the name, address or description of the owner of the trademark; or

(c) cancel any entry of the trademark.
  1. Surrender of trademark
  2. Alteration of a trademark
  3. Addition of goods or services
  4. Removal for non-use of trademark
  5. Rectification of Register

The Registrar shall have the power to rectify any entry in the Register at his or her discretion or on an application by a person where there is:

(a) omission of an entry;

(b) entry made without any sufficient cause;

(c) an error or defect in the entry; or

(d) an entry wrongly remaining in the Register.

PART 8 – ASSIGNMENT OF TRADEMARK

  1. Assignment of trademark
  2. Application to register assignment of trademark
  3. Recording assignment of trademark in Register

shall apply in the prescribed form and provide evidence of payment of the prescribed fee to the Registrar for a record of the assignment to be entered in the Register.


(2) Where the application complies with this Act, the Registrar shall within 7 days:

(3) The registration of the assignee shall take effect from the day the application was filed.

(4) The Registrar shall publish in the Gazette:
  1. Notice of application to be given to person recorded claiming interest in trademark

Where an application for the assignment of a trademark complies with this Act, the Registrar shall notify in writing any person recorded as claiming an interest or a right in respect of the trademark.

PART 9 - COLLECTIVE TRADEMARKS

  1. Collective Trademarks

A collective trademark is a sign used or intended to be used for goods or services dealt with or provided in the course of trade by members of an association, to distinguish those goods or services from goods or services so dealt with or provided by any person who are not members of the association.

  1. Limitation on rights given by registered Collective Trademark
  2. Infringement of Collective Trademark

In any suit or action filed in Court by an association in whose name a collective trademark is registered seeking relief of infringement of the collective trademark the association may take into account in claiming damages, any damage or loss of profits sustained or incurred by the members of the association as a result of the infringement.

PART 10 – INFRINGEMENT OF TRADEMARKS

  1. Infringement of trademarks

which may or may not mislead the public.


(2) A person infringes a trademark which is well known, where the person uses a trademark that is substantially identical with or deceptively similar to the trademark for:

(3) Subsection (1) applies only if the sign is used in such a manner as to render the use of the sign as likely to be taken as being used as a trademark.

(4) A person infringes a registered trademark where:

(5) In deciding whether a trademark is well known in the Republic, the Court shall take into account the extent to which the trademark is known within the relevant sector of the public, whether as a result of the promotion of the trademark or for any other reasons.

51 Infringement of contractual requirements

(1) A trademark is infringed where:

(2) The acts referred to under subsection (1) are:

52 Infringement of trademark by breach of restrictions

(1) This section applies to a trademark where the registered owner, assignee or an authorised user of the trademark having power to do so has caused a notice prohibiting any act, in relation to the goods for which the trademark is registered to be displayed:

(2) The following acts are prohibited:

(3) Subject to subsection (4), a person infringes a trademark to which this section applies if the person:

(4) The trademark is not infringed if the owner of the goods:

53 Trademark not infringed when used in good faith

A person does not infringe a trademark when:

(a) the person uses in good faith:

(b) the person uses a sign in good faith to show:

(c) the person uses the trademark in good faith to show the intended purpose of the goods or services;

(d) the person uses the trademark for the purposes of comparative advertising; or

(e) the person exercises a right to use a trademark given to the person under this Act.
  1. Goods or services to which the registered trademark has been applied by or with consent of registered owner

A person who uses a registered trademark for goods or services that are similar to goods or services for which the trademark is registered does not infringe the trademark where the trademark has been applied to or in relation to the goods or services by or with the consent of the registered owner of the trademark.

  1. Action for infringement

PART 11 – OFFENCES

  1. Falsifying trademarks
  2. False representation of trademarks
  3. False entries in Register
  4. Deceiving or influencing the Registrar
  5. Forgery of trademarks

PART 12 – MISCELLANEOUS

  1. Minister may authorise officers

The Minister may, by notice in the Gazette, authorise an officer of the Department of Justice or a police officer to be an authorised officer for the purposes of this Act.

  1. Liability of Registrar or authorised officers

The Registrar or an authorised officer shall not be liable in any civil or criminal proceedings for anything done in the exercise of a power under this Act if the act or omission was done in good faith or on reasonable grounds.

  1. Jurisdiction of District Court

The District Court shall have jurisdiction to hear and determine all criminal offences under this Act and, shall have powers to impose the penalty or punishment in respect of the offences under this Act.

  1. Barrister and solicitor or pleader may assist

A barrister and solicitor or pleader with more than 5 years’ experience may assist an owner, person authorised by the owner or an assignee of a trademark to:

(a) register a trademark; and

(b) carry out such other requirements under this Act.
  1. Passing-off actions

damages may not be awarded against the person if the person satisfies the Court;


(c) that at the time when the person began to use the trademark he or she was unaware and had no reasonable means of finding out that the trademark of the owner was in use; and

(d) that when the person became aware of the existence and nature of the trademark of the owner, he or she immediately cease to use the trademark in relation to the goods or services to which it was used by the owner.
  1. Regulations

The Cabinet may make regulations prescribing all matters necessary or convenient to be prescribed to give effect to this Act.

  1. Repeal

The Law Adoption (Trade Marks Regulations) Act 1964 is hereby repealed.



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