Clause 32

by deleting subsections (1) to (4) and substituting the following subsections:“(1) A mark adapted in relation to any goods or services to distinguish in the course of trade goods or services, as the case may be, certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods or services, as the case may be, not so certified shall be registrable as a certification trade mark in Part A of the register in respect of those goods or services 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, or the provision of services, of the kind certified.In determining whether a mark is adapted to distinguish as aforesaid, the Registrar may have regard to the extent to which —

the mark is inherently adapted so to distinguish; and

by reason of the use of the mark or of any other circumstances, the mark is in fact adapted so to distinguish.(2) Subject to subsections (3) to (5), and sections 48 and 52, the registration of a person as proprietor of a certification trade mark shall, if valid, give to that person the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the mark is registered 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 registered proprietor of the trade mark or a person authorised by him under the regulations in that behalf using it in accordance therewith, uses in the course of trade a mark identical with it or nearly resembling it, in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either —

as being use as a trade mark; or

in a case in which the use is use upon the goods or in physical relation thereto or use upon the services at or near the place where the services are available for acceptance or in an advertising circular, or other advertisement, issued to the public, as importing a reference to some person having the right either as the registered proprietor or by his authorisation under the relevant regulations to use the trade mark or to goods or services certified by the registered proprietor.(3) The right to the use of a certification trade mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of the mark in any manner in relation to goods to be sold or otherwise traded in, in a place, in relation to goods to be exported to any market, in relation to services for use or available for acceptance in a place, or in any other circumstances to which, having regard to those conditions or limitations, the registration does not extend.(4) The right to the use of a certification trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of the mark as aforesaid by any person —

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 registered proprietor or another in accordance with his authorisation under the relevant regulations has applied the trade mark and has not subsequently removed or obliterated it, or if the registered proprietor has at any time, expressly or impliedly, consented to the use of the trade mark;

in relation to services to which the proprietor of the trade mark or another in accordance with his authorisation under the relevant regulations has applied the trade mark, where the purpose and effect of the use thereof is to indicate that those services have been certified by the proprietor or where the proprietor has at any time, expressly or impliedly, consented to the use of the trade mark; or

in relation to goods or services adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given as aforesaid 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 or services 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 or services are certified by the proprietor:Provided that paragraphs (a) and (b) shall not have effect in the case of use consisting of the application of any such mark as aforesaid to any goods or services, notwithstanding that they are such goods or services as are mentioned in those paragraphs, if the application is contrary to the relevant regulations.”.(b)by deleting the words “Section 11(2) to (6)” and “section 11(1)” in subsection (7) and substituting the words “Section 12(2) to (7)” and “section 12(1)”, respectively;

by deleting the words “section 11(2) to (6)” in the first line and “section 11” in the fourth line of subsection (8) and substituting the words “section 12(2) to (7)” and “section 12”, respectively;

by deleting the words “section 11” in the sixth line of subsection (11) and substituting the words “section 12”; and

by deleting subsection (16) and substituting the following subsections:“(16) The following provisions of this Act shall not have effect in relation to a certification trade mark:

sections 10, 12, 18 and 19 (except as expressly applied by this section), 30, 40, 41, 42 (4) to (8), 45, 51 and 76 (3); and

any provisions the operation of which is limited by the terms thereof to registration in Part B of the register.(17) A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Registrar who before giving his decision shall consider —

whether the person to whom it is proposed to assign or transmit the mark is competent to certify the goods or services in respect of which the mark is registered;

whether in all the circumstances the proposed assignment or transmission would be to the advantage of the public.(18) A certification trade mark shall not be assignable or transmissible to a person who carries on a trade in goods, or the provision of services, of the kind certified.(19) Any decision of the Registrar under this section shall be subject to appeal to the court.”.