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Trademarks
(Amendment) Act, 2014 Act 876
ARRANGEMENT
OF SECTIONS
Section
I. Section
1 of Act 664 amended
2 . Section
2 of Act 664 amended
3. Section
3 of Act 664 repealed
4. Section
4 of Act 664 amended
5. Section
5 of Act 664 amended
6. Section
6 of Act 664 amended
7. Section
15 of Act 664 amended
8.
Section 16 of Act 664 amended
9.
Section 26 of Act 664 amended
10. Section
32A inserted
II. Section
51 of Act 664 amended
12. Section
52 of Act 664 amended
13. Section
53 of Act 664 amended
14. Section
54 inserted
15. Third
Schedule to Act 664 inserted
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ACT
ENTITLED
TRADEMARKS (AMENDMENT) ACT, 2014 ACT 876
AN ACT to amend the Trademarks Act, 2004
(Act 664) to reconcile renewal periods for
the registration of trademarks, provide for
the international registration of trademarks
and for related purposes.
DATE OF ASSENT: 24th April, 2014
PASSED by Parliament and assented to by the
President:
Section 1 of Act 664 amended
1.
The Trademarks Act, 2004 (Act 664) referred
to as the principal enactment is amended by
the substitution for section 1 of "Meaning
of a trademark
1.
(1) A "trademark" means a sign or
combination of signs capable of
distinguishing the goods or services of one
un- dertaking from the goods and services of
another undertaking.
2.
(2) A trademark may consist of
(a)
words, personal names, designs, letters,
colours, numerals, shapes, holograms, sounds
or a combination of any of these elements,
or
(b)
slogans, where they are not long enough to
be protected by copyright.
3)
A reference in this Act to a trademark
includes a ref- erence to a collective mark
or certification mark".
Section
2 of Act 664 amended
3.
The principal enactment is amended by the
substitution for section 2 of
"Meaning of collective mark and
certification mark
2.
(1) A collective mark is a sign of an
association of manufacturing, trading or
service enterprise that serves to
distinguish the goods or services of the
members of the association from those of
other enterprises.
(2) A certification mark is a
sign or combination of signs capable of
designating any specific characteristic,
including quality, origin or methods of
production, material, mode of manufacture of
goods or performance of services.
(3) An application for the
registration of a certification mark shall
(a)
designate the sign as a certification mark;
and
(b) be accompanied by the
rules governing its use
.
(4) Subsection (3) applies to all
certification marks, including certification
marks owned by government agencies."
Section 3 of Act 664 repealed
3.
The principal enactment is amended by the
repeal of section 3.
Section 4 of Act 664 amended
4.
Section 4 of the principal enactment is
amended by the substitu- tion for subsection
(2) of "(2) The application shall
(a)
be accompanied with a reproduction of the
trademark and a list of the goods or
services for which the registration of the
trademark is requested, using the
International Classifica- tion; and
(b)
state that the trademark is being used by
the applicant or with the consent of the
applicant in relation to the goods or
services or that the applicant has a
bonafide intention that the trademark should
be used."
Section 5 of Act 664 amended
5. The principal
enactment is amended by the substitution for
section 5 of
"Grounds for refusal of registration
5. A
trade mark shall not be registered if,
(a) it is a trade
name or sign that belongs to the public
domain except where the trade name or sign
has become accepted as a trademark for the
goods or services for which they are
claimed;
(b) it is
incapable of
(i) distinguishing the
goods or services of one enterprise from the
goods or services of another enterprise or
devoid of a distinctive character,
(ii) designating the
characteristics of the goods or services or
shapes that constitute the nature of the
goods or shapes of the goods or of their
packaging that are technically necessary;
(c) it is contrary
to public order or morality;
(d) it is likely
to mislead the public or trade circles with
particular reference to the geographical
origin of the goods or services, their
nature or characteristics such as the kind,
quality, intended purpose, the: time of
production of the goods or rendering of the
service;
(e) it is
identical to or is an imitation of or
contains as an element, an armorial bearing,
flag, emblem, name, abbreviation or initials
of the name, official sign or hallmark
adopted by a State, intergovernmental
organisation or organisation created by an
international convention unless authorised
by the competent authority of that State or
organisation;
(f) it is
identical to or confusingly similar to or
constitutes a translation of a trade mark or
trade name which is well known in the
country for identical or similar goods or
services of another enterprise or the trade
mark is well known and registered in the
country for goods or services which are not
identical or similar to those under
application but the use of the trade mark
will indicate a connection between those
goods or services and the owner of the well
known trade mark and the interests of the
owner of the well known trade mark are
likely to be damaged by the use of the
trade mark; or
(g) the trade mark
is identical to a trade mark of another
owner already on the register or identical
to a trade mark the subject of an
application with an earlier filing or
priority date for the same goods or services
or closely related goods or services or if
it resembles that trade mark so closely that
it is likely to deceive or cause confusion."
Section 6 of Act 664
amended
6. Section 6 of
the principal enactment is amended by the
repeal of paragraph (b) of subsection
(1).
Section 15 of Act 664
amended
7. Section 15 of the
principal enactment is amended by the
insertion after subsection (5) of
"(6)The owner of a
trademark may transfer the trademark in
whole or in part for the goods or services
for which it has been registered.
(7) Unless otherwise
agreed, a transfer of an enterprise shall
imply a transfer of its trademark rights."
Section 16 of Act 664
amended
8. Section 16 of
the principal enactment is amended by the
insertion after subsection (2) of
"(3)A licence contract
concerning
(a)the registration of a
mark; or
(b) an application
for registration
shall provide for
effective control by the licensor of the
quality of the goods or services of the
licensee in connection with which the mark
is used, where the control is appropriate or
necessary.
(4) A
licence contract is not valid if
(a) that licence
contract does not provide for quality
control; or
(b) the quality
control is not effectively carried out.
(5) A Court may declare
the mark as abandoned by the owner.
(6)
Abandonment is a defence in infringement
proceedings."
Section 26 of Act 664 amended
9. Section 26 of the
principal enactment is amended by the
insertion after subsection (4) of
"(5) A
person who for the purpose of gain for that
person or any other person or with intent to
cause loss to any other person and without
the consent of the owner of a registered
trademark
(a) applies a sign
or mark which is identical or likely to be
mistaken for a registered trademark
(i) to goods or the
packaging of goods;
(ii) for labelling goods;
(iii) for advertising
goods; or
(iv) as a business paper
in relation to goods;
(b) is in
possession of goods with a sign or mark
which is identical or likely to be mistaken
for a registered trademark with intent to
sell, offer or expose for sale, hire,
distribute or for any purpose of trade;
(c) manufactures
goods which are identical or designed to
deceive or be mistaken for a registered
trademark; or
(d) is in
possession of goods with intent to do an act
specified under paragraph (a); or
(e) has an article
in the possession, custody or control of
that person in the course of business,
knowing or having reason to believe that
that article is, has been, or will be used
to produce goods, the labelling or packaging
goods, as a business paper in relation to
goods, or for advertising goods,
commits an offence and is
liable on summary conviction to a fine of
not less than two thousand five hundred
penalty units and not more than seven
thousand penalty units or to a term of
imprisonment of not less than five years and
not more than fifteen years or to both.
(6) A person charged with
an offence under subsection (5) in relation
to the following is not entitled to bail:
(a) foods, drugs, medical devices,
household chemicals or cosmetics;
(b)vehicle and
machine parts; or
(c) electrical
appliances.
Section 32A inserted
10. The principal
enactment is amended by the insertion after
section 32 of a new 32A
"Forfeiture and
destruction of counterfeit or pirated goods
32A (1) Where in connection with an
investigation or prosecution of an offence
under this Act a person finds
(a) goods or the
packaging of goods which bears a sign
identical to or likely to be mistaken for a
registered trade mark,
(b) a material
bearing a sign intended to be used for
labelling or packaging of goods, as a
business paper in relation to goods or for
advertising goods; or
(c) articles
specifically designed or adapted for making
copies of a registered trademark
that person may apply to
the Court for an order for the forfeiture of
the goods, material or articles.
(2) An application under
subsection (1) may be made
(a) where
proceedings have been brought in a court for
a relevant offence relating to any or all of
the goods, material or articles; or
(b) where an
application for the forfeiture of the goods,
material or articles has been made to a
court.
(3) Where
an application is made under this section,
the Court shall make an order for
(a) the forfeiture
of the goods, materials or articles if it is
satisfied that a relevant offence has been
committed in relation to the goods,
materials or articles; and
(b) the
destruction of the goods, materials or
articles in accordance the order.
(4)
Subject to subsection 3 (b) the Court
may release the goods, materials or articles
to a person on condition that that person
(a) causes the
offending sign to be erased, removed or
obliterated, and
(b) complies with
any order to pay costs which has been made
against that person.
(5) A
person aggrieved by an order or decision of
the Court may appeal against that order or
decision.
(6) For the
purposes of this section a "relevant
offence" means an offence in relation to the
unauthorised use of a trade mark in relation
to goods or under Part III of Trade
Descriptions and Fraudulent Marks or any
offence involving dishonesty or deception. "
Section 51 of Act 664
amended
11. The principal
enactment is amended in section 51 by the
addition of a new subsection (3)
"(3) Regulations made
under this section may provide for giving
effect to the provisions of the Madrid
Protocol and may, in particular provide for
(a) applications
for international registrations by way of
the Trademark Office as Office of origin;
(b) procedures to
be followed where the basic application or
registration fails or ceases to be in force;
(c) procedure to
be followed where the office receives from
the International Bureau, a
request for extension of protection to
Ghana;
(d) effect of a
successful request for extension of
protection to Ghana;
(e) transformation
of an application for an international
registration, into a national application
for registration;
(f) communication
of information to the Inter- national
Bureau; and
(g) payment of
fees and amounts prescribed in respect of
applications for international registration,
extensions of protection and renewals.
Section 52 of Act 664 amended
12. Section 52 of
the principal enactment is amended by the
addition of the following in the
interpretation section:
"Madrid Protocol" means
the Protocol relating to the Madrid
Agreement concerning the International
Registration of Marks, as adopted at Madrid
on 27th June, 1989;
"International Bureau"
has the meaning given by Article 2 (1) of
the Protocol;
"International Trademark"
means a trademark which is entitled to
protection in Ghana under that Protocol; and
"Well-known trademark"
means the trademark of a person who is
(a) a national of
a country that is a party to the Paris
Convention; or
(b)
domiciled in or has a real and effective
commercial establishment in a country that
is a party to the Paris Convention and the
trademark is recongnised or known in the
relevant public sector as belonging to that
person.
Section 53 of Act 664 amended
13.
Section 53 of the principal enactment is
amended by the substitution for subsection
(4) of
"(4) Marks registered
under Act 270 shall be renewed for ten years
from the date of expiration of the original
registration or of the last renewal of
registration and after renewal shall be
reclassified in accordance with the
international classification."
Section 54 inserted
14. The principal
enactment is amended by the addition of a
new section 54.
International
registration
"54. The provisions of
(a) any
International Treaty in respect of
Trademarks, to which the country is a party;
and
(b) the Third
Schedule shall apply to matters dealt with
under this Act."
Third Schedule to Act
664 inserted
15. The principal
enactment is amended by the addition of a
new Third Schedule.
Third Schedule
(Section 54)
SPECIAL PROVISIONS RELATING TO PROTECTION
OF TRADE MARKS THROUGH INTERNATIONAL
REGISTRATION UNDER THE MADRID PROTOCOL
IA. The provisions
of this Part apply to international
applications and international registrations
under the Madrid Protocol.
lB. In this Part,
unless the context otherwise requires
"application in relation
to a Contracting State or a Contracting
Organisation" means an application made by a
person who is a citizen of or is domiciled
in, or has a real and effectIve industrial
or commercial establishment in, that
Contracting State or a State which is a
member of that Contracting Organisation and
for the purposes of this clause, 'real and
effective industrial or commercial
establishment' means any establishment where
some bona fide industrial or commercial
activity takes place and need not
necessarily be the principal place of
business;
"basic application" means
an application for the registration of a
trade mark filed under section 4 and which
is used as a basis for applying for an
international registration;
"basic registration"
means the registration of a trade mark under
section 7 and which is used as a basis for
applying (or an international registration;
"Common Regulations"
means the Regulations concerning the
implementation of the Madrid Protocol;
"Contracting
Organisation" means a Contracting Party that
is an international organisation;
"Contracting Party" means
a Contracting State or Contracting
Organisation party to the Madrid Protocol;
"Contracting State" means
a country party to the Madrid Protocol;
"international
application" means an application for
international registration or for extension
of the protection resulting from an
international registration to any
Contracting Party;
"International Bureau"
means the International Bureau of the World
Intellectual Property Organisation;
"international
registration" means the registration of a
trade mark in the register of the
International Bureau effected under the
Madrid Protocol;
"Madrid Agreement" means
the Madrid Agreement Concerning the
International Registration of Marks adopted
at Madrid on the 14th day of April 1981, as
subsequently
revised and amended; and
"Madrid Protocol' means
the Protocol relating to the Madrid
Agreement Concerning the International
Registration of Marks adopted at Madrid on
the 27th day of June, 1989 as
amended from time to time.
K'. An international
application shall be dealt with by the Trade
Marks Registry.
ID. (1) Where an
application for the registration of a trade
mark has been made tinder section 4 or a
trade mark has been registered under section
7, the applicant or the registered owner may
make an international application on the
form prescribed by the Common Regulations
for international registration of that trade
mark.
(2) A person holding an
international registration may make an
international application on the form
prescribed by the Common Regulations for
extension of the protection resulting from
the registration to any other Contracting
Party.
(3) An international
application under sub-section (1) or sub-
section (2) shall designate the Contracting
Parties where the protection resulting from
the international registration is required.
(4) The Registrar shall
certify in the prescribed manner that the
particulars appearing in the international
application correspond to the particulars
appearing, at the time of the certificates,
in the application under section 4 or the
registration under section 7 and shall
indicate the date and number of that
application or the date and number of that
registration as well as the date and number
of the application from which that
registration resulted as the case may be,
and shall within the prescribed period
forward the international application to the
International Bureau for registration, also
indicating the date of the international
application .
(5) Where at any time
before the expiry of a period of five years
of an International registration, whether
the registration has been transferred to
another person or not, the application under
section 4 or the registration under section
7, as the case may be, has been withdrawn or
cancelled or has expired or has been finally
refused in respect of all or some of the
goods or services listed in the
international registration, the protection
resulting from such international
registration shall cease to have effect.
(6) Where an appeal is
made against the decision of registration
and an action requesting for withdrawal of
application or an opposition to the
application has been initiated before the
expiry of the period of five years of an
international registration, any fmal
decision resulting into withdrawal,
cancellation, expiration or refusal shall be
deemed to have taken place before the expiry
of five years of the international
registration.
(7) The Registrar shall
during the period of five years beginning
with the date of international registration,
transmit to the International Bureau every
information referred to in sub-section (5).
(8) The Registrar shall
notify the International Bureau the
cancellation to be effected to an
international registration keeping in view
the current status of the basic application
or the basic registration, as the case
maybe.
IE. (1) The
Registrar shall, after receipt of an advice
from the International Bureau about any
international registration where Ghana has
been designated, keep a record of the
particulars of that international
registration in the prescribed manner.
(2) Where, after
recording the particulars of any
international registration referred to in
sub-section (1), the Registrar is satisfied
that in the circumstances of the case the
protection of trade mark in Ghana shall not
be granted or such protection should be
granted subject to conditions or limitation
or to conditions addition,al to or different
from the conditions or limitations subject
to which the international registration has
been accepted, the Registrar may, after
hearing the applicant, refuse grant of
protection and inform the International
Bureau in the prescribed manner within
eighteen months from the date on which the
advice referred to in sub-section (1) was
received.
(3) Where the
Registrar finds nothing in the particulars
of an international registration to refuse
grant of protection under sub-section (2),
the Registrar shall within the prescribed
period cause the international registration
to be advertised in the prescribed manner.
(4) The provisions of
sections 5 to 16 and 18 to 22 shall apply in
relation to an international registration as
if the international registration were an
application for registration of a trade mark
under section 4.
(5) When the
protection of an international registration
has not been opposed and the time for notice
of opposition. has expired, the Registrar
shall within a period of eighteen months. of
the receipt of advice under sub-section (1)
notify the International Bureau of its
acceptance of extension of protection of the
trade mark under the international
registration and, in case the Registrar
fails to notify the International Bureau, it
shall be deemed that the protection has been
extended to the trade mark.
(6) Where a registered
proprietor of a trade mark makes an
international registration of that trade
mark that designates Ghana, the
international registration from the date of
the registration shall be deemed to replace
the registration held in Ghana without
prejudice to any right acquired under the
previously held registration and the
Registrar shall, upon request by the
applicant, make necessary entry in the
Register referred to in sub-section (1).
(7) A holder of
international registration of a trade mark
who designates Ghana and who has not been
extended protection in Ghana shall have the
same remedy which is available to any person
making an application for the registration
of a trade mark under section 4 and which
has not resulted in registration under
section 7.
(8) Where at any time
before the expiry of a period of five years
of an international registration, whether
the registration has been transferred to
another person or not, the related basic
application or, as the case may be, the
basic registration in a Contracting Party
other than Ghana has been withdrawn or
cancelled or has expired or has been finally
refused in respect of all or some of the
goods or services listed in the
international registration, the protection
from the international registration in Ghana
shall cease to have effect.
IF. (1) From the
date of the international registration of a
trade mark where Ghana has been designated
or the date of the recording in the register
of the International Bureau about the
extension of the protection resulting from
an international registration of a trade
mark to Ghana, the protection of the trade
mark in Ghana shall be the same as if the
trade mark had been registered in Ghana.
(2) The
indication of classes of goods and services
given by the applicant shall not bind the
Registrar with regard to the determination
of the scope of the protection of the trade
mark,
IG. (1) The
international registration of a trade mark
at the International Bureau shall be for a
period often years and may be renewed for a
period of ten years from the expiry of the
preceding period.
(2) Subject to
payment of a surcharge prescribed by the
rules, a grace period of six months shall be
allowed for renewal of the international
registration.
IH. The
Trademark Registry shall process an
international application in accordance
with,
(a) the Protocol
and regulation made under the Madrid
agreement concerning the international
agreement of marks and the Protocol relating
to the agreement; and
(b) the
administrative instructive instructions made
under the regulations referred to under
(a)."
Date of Gazette
notification: 25th July, 2014.
GPCL, ASSEMBLY
PRESS, ACCRA. GPCLlA3 7l!42010'7/20 14
Website:
www.ghanapublishingcompany.com
E-mail:
info@ghanapublishingcompany.com
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