T' , -'/

Sr,tnITEs oF THE Rrpusrtc or Sours Arruce - Perrurs, Desrcns auo Coprancrr

TRADE iVIARKS I}.I SOUTH WEST AT"RICA ACTNO. 4g OF tg73

[Assrxrro ro 24 M,ry, 1973] [Derc or CouusNcEMENT: 1 Jexu,q,Ry, 1974](Uniess otherwise indicated)

(English text signed by the State Presirient)

ACT

To provide for the regisnarion of trade marks rnd certification nnarks in theof south west Afcca and to provide ior incidentai matters.

terntorY

IN|TR.ODUCTORY

1. Division of Act into parts.-This Act is divicied into se'renreen parts which reiateto ihe icilorving marters resoectiveiy:

P.rnl I. Acministration (sec:ions 5 to 9).P-rnr II- R.egistrabie Tracie Marks (sections i0 to i9).P.*r III- Appiication for Registration (sections l0 to 25).Plar IV. Opoosition (seclions 26 to -:0).Prnr v. Tire Register of rracie Vlarxs isecrions -11 to 3o.P'rnr vI. il.egistration anci its Effects (sections 3i ,"o 12).P.*r VII. Infnngement (sections -13 to 46).Plni viII. Duration and Renewai of R.egistraticn (secrio n 47).Prnr IX. Rr"gistered Users (secticn.l8).P,rnr X. Assigament (sections 49 to 5i).P.nr Xi. Certification Nlarl<s (secrion 52).P.rnr XiI. Defensive Trade Nlarks isec:ion 53).P,rnr XIII. Powers and Duties of R.egrstrar (secricns i4 io 5g).PlRr XfV. Evicience (sections 59 to 52).?^rar XV' Apceeis to and Powers of i ire Court (sections 53 to 69).P,\Rr XVI. Offences (sections 70 to 7?).PlRr Xrtfl. llisceilaneous (sections 73 :o B.l).

2. Definitions.-{1) in this Act. uniess the conrext otherwise indicates-"agent" means a person who, in terns of this Act, is entitled to reoresent another

person;

"essignment" means assignment by act of the panies ccncerned., and .,Lssignrt or"assignable" has a corresDonding neaning;

"certification mark" means a mark registereci or Ceemeci to have been registered unciersection 52;

'6court" means the South-West Afnca Division of ihe Supreme Court of South Africa:

n i t

t " ' . : : U i r i , , l i ; ,1 , .

Srlrures oF THE RrpL'srtc on Sotrrn Ar'rucr - P.q.TENrs, DrsrcNs AND Copyrucnrs. 2 Trade ilIarks in south west Africa Act, No. 48 of 1973 s. 2

65device" means any visual representation or illustration capable of being reproducedupon a surface, whether by printing, embossing or by any other means;

ttlegal practitionert' means an attorney of the Supreme Court of South Africa or anadvocate of such Court duiy instructed by an attorney or agent to appear before theregistrar or his deputy;

"limitations" means any limitations of the exclusive right to the use of a trade markgiven by the registration of a person as proprietor thereof, including limitations of thatright as to the mode of use, as to use in relation to goods to be sold or otherwise tradedin, or as to services to be performed, in any piace within the territory, or as to use inreiation to goods to be exporteci to any market outside the territory;

o'mark" inciudes a device, brand, heading, label, ticket, neme, signature, word, letter,numeral or any ccmbination thereof or a container for goods;

"Minister" means the Minister of Economic Affairs;

"permitted use" rneans the permitted use referred to in secdon 48 (1);

"prescribed" means orescribeci by or under this Act;

"register" means the register of tracie marks for South West Africa ieferred to insection 31 ;

"registered trade marktt neans a trade mark registered or deemed to be registered. underthis Act;

"registered user" me3ns a person who is for the time being registerei as such unciersect ion 48;

"registrar" means the registrar of irade marks for South West Africa iefere<i to insect ion 6 ( i ) ;

'teguladon" means any reguiation macie and in force under this Act;ttrepealed law" means those provisions of the Patents, Designs and Tracie lvfarks

P'nnlrmrtinn 19:3, which reiate to trade marks and which are repealed by ft is Act;r ^ v v r s u s l r v u ,

"territor,v" neans the territory of South West Africa;

"this Act" includes the iegulations;('frade mark", other than a certification mark, means a mark useC or proooseC to

be used in reiation to goods or services for the purposes of-(a) indicating a connection in the course of trade between the goocis or services

and some Derson having the right, either as proprietor or as a registered user,to use the mark, rvhe:her with or without an inciication of the identity of that)erson: anc

(r) distinguisiring the goods or services in reiation to which the inark is used orproooseci to be useC, liom the same icind of goods or serrices connectedin the course of trade with any other person;

"transmission" means iiansfer by operation of law, devolution on the executor of adeceaseci person and any other rnode of transfer not being assignment, and tttansmit"

or "hansmissiblet' has a corresponding meaning.

(2) References in this Act to the use of a mark shall be construeci as references rothe use of a printed or other visual representation of the mark, and in adciition, in the caseof a ccnLainer, use of such container and, in the case of a mark which is capable of beingaudibly reprociuced, the use of an auciible reproduction of the mark.

(3) (a) R.ei'erences in this Act to the use of a mark in relation to goods shall be con-strued as references to the use thereof upon, or in physical or other relation to, goods.

A,UttL'!).lr';;.: i

nL.-./

Srerures oF THE Rrplurtc or SorrrH Arruca - Parrxrs, DEsrcNS AND Copyrucurss. 2-8 Trade Marks in South West Africa Act, No. 48 of 1973 ss. 2-S

(b) References in this Act to the use of a mark in relation to services shall beconstrued as references to the use thereof in anv relat'on to the performance of such services.

3. Application of this Act to trade marks registered under the repealed law.{l) Subjectto the provisions of section 80, this Act shall appiy to trade marks iegistered or deerned robe registered under the repealed larv and such tricie marks shall be deemetj to be resisteredin part A of the register.

(l) Subject to the provisions of subsection (1), ail appiicarions and. proceedingscommenced under the repealed larv shall be dealt rvith in accorciance with thJ provisionsof that iaw: Provided that, in the case of an application for the registration of a trade mark,the registrar may uDon a request by the applicant treat the appiication as an appiicationfor registrarion in pan B of the register.

{. Act binds Adninistration.-This Act shail bind the Administration of the rerritorv.

PART i

Aoltxtsrnertox

5. Estabiishment of trarie marks office.{l) There shail be estabiished. an office tobe callei the tracie marks office for South West .$rica.

(2) If lhe Vlinister cieems it expeCient, the saici office urav De estabiisheci outsicie theterriror,v at a piace determined by him.

(3) Any pi".e at which the said office is estabiished uncier subsection (2) shail forthe purposes of the jurisdiction conferred upon the court by this Act be deemed. to Desituated within the area of jurisciiction of the ccun. and any offence under this Act com-mitted at such piace or at any other place outside the territory where proceedings underthis Act are hearci and determined by the registrar in terms of section i4, m"y, notwith-stanCing the provisions oianv other Iaw, be trieci by the magistrate's court of ihe disrrictin which rhe place in question is siruated.

6. Registrar of frade marks for South West .Urice.-(i) There shail be an officer styiedthe registrar of trade marks for South West AJrica who shail be appointed subject to tirelaws governing the pubiic service and who shall, subject to the ciirJCtions of the Minister.have overall control of the tracie marks office for South

'West Africa.

(2) There may simiiariy be appointed a deouty registrar and an assistant re-eisriarot trad.e marks for South West Africa, who shail, subject to the ccntrol of the t.gfrrrur.have all the powers coni-erred by this Act on the registrar and. who shall, whenever theregisirar is for any reason unabie to fuifii his duties. ecr temporariilz in his steaci.

i. -ceai of trede marks oflfice for South West Africa.-There shail be a seal of the trademarl<s oiice for South West AJrice and the impression of the seai shail be judiclaily noticeci.

8. Who may rct as frade mark agent.-(l) The registrar shall permit an agent to rj.oon behalf of the person for whom he is agent any act in connection with registraiion und.erthis Act or any proceedings relating thereto: Provicied that no person otfer than a legalpractirioner or a person rvhose name has been entered in the reqister contemoiated insubsection (2) shall be permitted so to act.

(2) The registrar may in writing authorize any person who, in the opinion of theregistrar, is suitably qualified and who is not by virtue of tne fact that he is i legal practi-tioner entitled to act as an agent contemplated in subsection (1), to act as such an agenr,and shall keep in the trade marks office for South West Africa a register in which shail beentered the names and addresses of ail persons so authorized bv him.

! i '

585

Sr1rurrs oF THE Rppunric oF SourH Arruce - PereNts, DrslcNS AND CopvrucHrss. 9-12 Trade Marks in South West Africa Act, No. 48 of 1973 ss. 9-12

9. Unqualified persons not to practise as trade mark agents.-(l) No person may on

behalf of any other person perform any act in connection with any registration under this

Act or any proceedings relating thereto, or for gain furnish advice in relation to such regis-

tration or proceedings, or describe himself as a trade mark agent for the purposes of this

Act or hold himself out, or permit himself to be described or held out, as a person who is

entitled to undertake the work of a trade mark agent for the purposes of this Act, unless

he is a legai practirioner or a person whose name has been entered in the register referred to

in section 8 (2).

(2) Any person who contravenes the provisions of subsection (1) shail be guilty of

an offence and liable on conviction to a fine not exceeding two hundred rand.

PART II

RrctsrneslE TRADE Menxs

10. Essential particulars of trade marlis registrable in part A of register.{1) In orcier

to be registrable in part A of the register, a trade mark (other than a certification mark)

shail contain or consist of a distinctive mark.

(2) A mark which is reasonably required for use in the trade shail not be registrabie.

(3) The name of a company, individual or firm not represented in a special or parti-

cuiar m&nner. a signature other than that of the appiicant for registrs.tion or of some pre-

decessor in his business, or e word being in its orciinary signification a suraame, sirall not

be registered uniess it is proved that it is distinctive.

(a) No regisrrarion of a container in terns of subsection (1) shall pre'ient the bona

.fide use by others of any utilitarian or functional feature embodied in such container.

(5) The registration of a container in terms of subsection (1) D&Y, upon applicationto the court or, at the option of the appiicant and subject to the provisions of section 69,

to the registrar by any person interested, be expunged by the court or the registiar, as the

case may be, if it is established that the registration is or has become likely to limit the

development oi rny ail or industry.

11. Requisites for registration of a trade mark in part ts of the register.-ii) In order

to be registrabie in part B of the register, a trade mark shall, in reiation to the gcods or

services in ..tpe.t of which it is proposed to be registereC, be capabie of becoming regis-

trable, through use, in part A of the register in respect of such goods or seryices.

(2) A trade mark may be registered in part B of the register notrvithstanding the

registration in part A of the register in the name of the same proprietor of the same trade

mark or any part or parts thereof.

12. Meaning of "distinctive".-{1) For the purposes of section 10 "distinctive"

means adapted. in relation to the goods or services in respect of which a tracie mark is

registered ot p.oposed to be registered. to distinguish goods or servicss with which the

prbprietor of the trade mark is or may be connected in the course of trade from goods or

iervices in the case of which no such connection subsists, either generaily or, where the

trade mark is registered or proposed to be registered subject to limitations, in reiation to

use within those limitations.

(2) In determining whether a trade mark is distinctive as aforesaid, regard may be

had to the extent to which-

(q) tire trade mark is inherently adapted to distinguish; and

(r) by reason of the use of the trade mark or by reason of any other citcumstance,

the trade mark is or has become adapted to distinguish. :

f ,

Sreru"rns oF THE Rgpr,Ruc or Souni Ar.ruc.L - Parrxrs, DesIcNs AND Copvmcnrss. 13-17 Trade Marks in South W'est Africa Act, I'{o. 48 of 1973 ss. 13-17

13. Registration to be in respect of particular goods or classes of goods.{1) A trademark shall be registered in respect of a particular class or particuiar classes of goods orservices or in respect of goocis or services falling in such ciass or ciasses in accordancs withthe prescribed ciassification.

(2) Where a trade mark has, either before or after the commencgrrent of this Act,been registered in accorciance rvith the requiref,rents of subsection (i) and, during the sub-sistence of such registration, the prescribeci ciassification in accordance with which thetracie mark was registered as aforesaid is revised cr substituteci by a new classification, theproprietor of the trade mark shail, upon the renewal of the registration thereof in termsof section -17. appiy rn the prescribeC manner for revision of the ciass or ciasses in which thetracie mark is registered. so as to bring it into conformity with the reviseC or substitutedciassif,cation.

(-1) If the re'riseC or substituted ciassification referieci to in subsection (2) iesuits intwo or more identical tracie marks owned by the same propietor which were und.er theore'*rious legistration iegisrered in separate ciasses, failing within a singie ciass, such m.arksshail, if the;r have :he sane re-sistration date. be consoljdarei as one registration in therevised cr substituted ciass. or if as a resuit ot the levised or substituted classification atracie mari< is requirei to be iecorded in more ihan one ciass, such nark sirall be deemed tobe separateiy registered h each ciass in wiricn the mark is so iecordeci anci shall be treateC asa seDarare:lade nark ior the Durposes of renervai thelecf in each ciass.

i4. \ilhat regisrrebie frade mark may not contain.-Tire :egistrar nav refuse to ;egistera ilace nark .vhich ccntains any of the foilowing:

i.a,1 the arns or seai of the territory; or

(,r) any wcrd. ietter or cie.rice rnciicadng Goverrment Datronage; or(_t) any mark specifred in the ieguiations as being a .:roiribiteri nark ior the rur-

?oses of ihrs section.

i5. ),iame or representation of person.-iVhere acpiicaticn is mad.e for registration ofa tiece marl< whrch consists of or inciucies ihe name or any representation of a peison, ;he:egistrar:tna:/ require the aopiicant to furnisir him rvith the ccnsenr or that person or, wheresuc,l person is deceasei. of his or her legai iepresentative, to the name or represenniionappeanng in ihe trade narx.

i6. ?rohibition of registrrtion sf ggrrrin mstter.-il) It shajl nor 'ee iawfui io registeras e :laie m.ari< or Dan ;f a ;recie inark 3ny :natter ihe use cf wlich .,vcuici be iikei;l tocieceive Ji osuSe :oniusicn orwoulci be contrcry io iarv or noraiit;r or wouid. be iikeiy togl'e fl ienco or ceuse aniicyance to any Derscn or ciass of cersons cr -vouid otherwise beii isentit lei io proteclion :n a ccurr of iaw.

,::) f, in ihe cpinion cf the reglstrar. r :riie marl< wiil, in use. be iikeiy io cieceiveas io :he character or quaiir.v of some. but rc''t lil, of the goocis or serrrices inciucieC in lhespecifrcaticn, ihe registrar ilcy, notwithstanciing *re provisions oi subsection (i) anci ofsection 36, uoon receipr oi rn undcrtaking by the proprietor cf the tracie marK that he wiillimir rhe use of the trade rnark to goocis or serrices in relation to whicn such use wiil, in iheopinion of the registiar, :rot be likeiy to d.eceive. register the irade nark in respecl of ailthe goocs cr serrices inciucieci in the specificetion.

ti. Prohibition of registretion of trade marks resembling eech other.{l) Subject tothe provisions of subsection (2), no trade mark shail be registerei if it so resembles a trademark beionging to a different proprietor and aireaciy on the iegister that the use of both suchtrade marks in reiation to goods or services in respect of whicn they are sought to be regis-tereci, and registered. wouid be likeiy to deceive or cause con-fusion.

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(Issue No. ,1 589

Srlnrrss oF THE Rrpusuc or Sotmr Arruca - Parsms, DrstcNS AtiD Copvnrcrnss. 17-20 Trade Marks in South West Africa Act, I{o. 48 of 1973 ss. 17-20

(2) In the case of honest concurrent use or of other special circumstances which maymake it proper to do so, the registrar D&y, on application in the prescribed manner, register,subject to such conditions and limitations, if any, as he may think it right to impose, trademarks the registration of which would otherwise be in contravention of the provisions ofsubsection (1).

(3) When separate appiications are made by different persons to be registered asproprietors respectiveiy of tracie marks that so resemble each other that the use of suchtrade marks in relation to goods or services in respect of which they are respectively soughtto be registered would be likely to deceive or cause confusion, the registrar may refuseto register any of them until the rights of those persons have, upon application in the pre-

scribed manner, been detemined by him, or have been settied by agreement in a mannerapproved by him.

18. Regisnation subject to disclaimer.-If a trade mark-

(a) contains any part not separately registereci by the proprietor as e. irade mark:or

(b) contains matter commoncharacter

the registrar or the court, in decicingremain on the register, may require, asthe register-

to the trade or othenvise of a non-distinctive

(i) thar the proprietor sirail disciaim any right to the exciusive use of any suchpart of the tracie mark. or to the exciusive use of ail or any portion of anysuch matter as aibresaid, to the exciusive use of which the registrar or thecourt hoids him not io be entirled; or

(ii) thar the proprietor shail make such other <iisclaimer or menorancium as theregisrrar or the court may consider necessary for the purtose of <iefining hisrights uncier the registration :

Provided that no disciaimer or memorandum on the register shail effect any ights of theproprietor oi a trade mark except such as arise out of the registration of ihe iracie nark iniespect of which the disclaimer is made.

19. Requirenents in regnrd to blank spaces.-If a trade mark contains any biank spaceor spaces apparently intended for adcied matter, the registrar may, in ciecioing whether thetrade mark sirail be entered on the register, require. as a condition oi its being entereC onrhe register, that rhe biank spa€ or spaces shali, in use, be occupieci oniy by matter of awhoiiy descriptive or ncn-distinctive character or by a :rade mark registereci in the name ofthe same proprietor in respect cf the same goocis or by e trede mark of whicn ire is a regis-tered user in respect of rhe same goocis with the ccnsent of the proprietor of such iraciemark. provideC that, in both cases. use cf such trade mark is not iikeiy to cieceive or causeccnfusion.

PART IiI

AppricertoN FoR Rtclsrne.rroN

20. Application for registration.-(1) Any person claiming to be the proprietor of atrade mark used or proposed to be used by him and who is desirous of iegistering it, shallappiy to the registrar in the prescribed manner for registration, and the appiication shall beaccompanied by the fee prescribed.

(2) Subject to the provisions of this Act, the registrar may refuse the application ormay accept it absoluteiy or subject to such amendments, modifications, conditions orlimitations (if an_v) as he may deem fit.

' l ' , i - ' r ' j

whether the trade mark shall be entereci or shalle condition of its being enterei or renaining on

59i(Issue No. 7)

t. ,i

Sreruras oF THE Rrpusuc oF SourH Arruce - PI.IENTS, DESTcNS AN-D Copyrucrrrss.20-Zl Trade h{arks in South West Africa Act, l,[o. 48 of 1973 ss.2A4A

(3) In the case of an application for registration of a trade mark (other than a certifi-cation mark) in part A of the register, the registrar Diry, if the applicant agrees, instead ofrefusing the application, treat it as an application for registration in part B of the registerand deal with the appiication accordingly.

(a) In the casc of a refusal or conditionai acceptance of the application, the registrarshall, on application by the appiicant in the prescribed manner and on payment of the pre-scribed fee, state in writing the grounds for his decision and the data used by him in arrivingthereat, and the decision shall be subject to appeal to the court.

(l The provisions of section 63 shail mutatis mutandis apply to an appeai under thissection, and on the appeal the court shall, if so required, hear the appiicant and the registrar,and shail make an order determining whether and, if so, subject to what amendments,modifications, conditions or lirnitations (if an-v-) the appiication is to be accepted.

(6) Appeals under this section shall be hearci on the data so stated by the registrar,and such further data as may have been iaid before him by the applicant, and no furthergrounds of objection to the acceptance of the aopiication shail be ailowed to be taken bythe registrar, other than those so stated by him, excopr by leave of the court hearing theappeai, and where any further grounds of objection are so taken, the applicant shali beentitled, on giving notice as prescribed, to rvithdrarv his appeal without payment of costs.

(7) The registrar or the court, as the case may be, may at any time. whether beforeor after acceptance of the appiication. correct any error in or in connection with the applica-tion, or may permit the aopiicant to amend his appiication uDon such tenns as the registraror the court, as the case mav be, may think nt.

21,. Advertisement of accepted appiication.-When an appiication for registration ofa trade mark has been accepted, whether absoiuteiy or subject to conditions or [mitations,the applicant shail, as soon as may be after acceptance, cause the application as acceptedto be acivertised in the prescribed manner, and the advertisement shall set forth all conditionsand limitations subject to which the appiication has been accepted.: Provided that the regis-trar nay require an appiication to be adveniseci in the prescribed manner before accept-ance if it reiates to a mark in respect of wirich proof that it is distinctive is required in termsof section 10 (3), or in any other case where it apoears to him that it is expedient by reasonof any exceptional circumstances so to do, and where an aoplication has been so advertisedthe registrar may, if he thinks fit, require it to be advertised again rvhen it has been accepted.

22. Registration of parts of trade mark.-Where the proprietor of a trade mark ciaimsto be entitied to the exciusive use of any part thereof separateiy. he may apply to registerthe whole and an;l sucr part as separate trade rnarks.

2-1. Rights in relation to parts of trade merk.-Each separate trade mark referred toin section 22 shall compiy with all the conditions of an inciepencient trade mark and shall,subject to the provisions of sections -18 (a) anci 39 (2), have all the rights attached to anindependent trade mark.

U. Proposed use of trade mark by body corporate to be constituted.-(1) No applica-tion for the registration of a trade mark in respect of any goods or services shall be refused,nor shall permission for such registration be withheld, on the ground oniy that it appearsthat the applicant Coes not use or propose to use the trade mark-

(o) if the registrar is satisfied that a body corporate is about to be constituted,and that the applicant intends to assign the tiade mark to the body corporate

i,' i - - - t r

Srertms oF THE Rrprnuc oF Sourn A-r'nrca - Prrexrs, DEsrcNS AND Coprnlcnrss. U-n Trade fufarks in South

'West Africa Act, No. 48 of 1973 ss,24-21

with a view to the use thereof in reiation to those goods or services by thebody corporate: Provided that the trade mark shall nor be registered unlessand until the registrar has been placed in a position to register the assign-ment in terms of section 51 simultaneously rvith registration of the trade mark;or

(b) if the appiicatiou is accompanied by an application for the registration ofa Derson as a registereci user of the trade mark, and the registrar is satisfiedthat the proprietor intends it to be used by that person in reiation to those-goocis or services and the registrar is also satisfied that ihat person will beregistereC as a registereci user thereof immediatei,v atter the registration of thetracie mark.

(2) The provisions of section,16 shail irave effect. in reiation to a trad.e mark legisteredunder the power ccnfeirei by subsection (1) of rhis secrion, as if for the reierence in sub-section (1) (a) of :hat sectirn to an intention on the part oi an eoplicant ibr iegistration thata trade mark shouici be useC by him, there were substitutei a iet-erence io an intention onhis part that ir sirouici be useci by rhe boci;r corpor3te or registerei user ccncelnei.

(3) The registrar mav, as a cond.ition of the exercise of the Dower confereci by sub-seciion (i) in favour of an appiicant who ieiies on en intention to assign to e body cor-porate as aforesaici, require him to give securitr' for the costs of any proceeciings leiative toar)/ oDposition or apoeai by him, anc. in cefauit of suca security being duly given , may treatthe aopiicatjon as abandoned.

25. Non-compieted epolicedons.---1,1) If, bv ieason of default on rhe can of rhe appii-cant, alter ecceDtance oi lhe apoiicetion. rhe resistration oi a tracie mark has nct beel ccm-pieted within sii nonths iicm the date of such ecceptance, rhe iegistrar shail give rodce oirhe n-on-contpietion to the apclicant. ancl. if at rhe exlirarion of rhin;r days from that noticeor cf such turther time .s in. registrar rna.v a.ilorv. ihe registration is not compiered, iheaopiication shail be deenec to have been abanConei.

(2) If ihe eppiication is act accected enci :he aopiicant, having reen 3c.,,isei cf :heregistrar's objections to the apoiication. f-aiis io iake any acrion within ihree nonths of thedate of such ad.vice. ihe appiiiaiion shail be deemec to have been abancioneci.

PAR.T IV

CppcsirloNr

26. Opnosition to regist13fi6a.-;,1) Any Derscn ihereinafter ieferieri io ns :he ,lbjectcr,,fivY, within iwo ncnths irom ihe iiate of the adver:isement of the eooiicatjon in lerms cisection 21, or

"vithin such iurther peiod es:he lesisrrar;na'r ailorv. ser-/e on;he apolicant

et Us aciress .or serzice anci locige rt ihe iraii.e inalks crice a notice of ooposition-to theregistraticn cf ihe tracie marl<. selting cut the 3rcuncis on whicn he reiies ro supDon irisnotice, anci rrooi oi service to ihe satisrhcrion of tte registrar shail be furnisired.

27. Lodging of ccunterstatement by apptricant.-(i) Wirhin one monrh after the lodgingof notice of opoosition, or within such iurlher periocl as ihe iegistrar may ailow, the appli-cant mav sel-re on the ob-iector at his aci.ciress for service anci iocige at the tracie marks officea counterstatement setting out the -qrounds on which i:e reiies in supporr of his apoiication,and proof of sen,'ice io the satisfaction of the registrar shail be furniineO

(2) If the applicant faiis so to locige a counterstatenent, he shaii be deemed to haveabandoned his apoiication.

595

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nt : - . l

Qssue No. 7)

t

Srenms oF THE Rrpu:suc or Sows Arruce - Perslrrs, DesrcNs AND Copyrucnrss. 28-30 Trade Marks in South TY'est Africa Act, No. 48 of 1973 ss. 28-30

28. Informd proceedings before registrar.{1) The registrar shall, with the consentof both parties, and on payment of the fee prescribed, consider the notice of opposition andttre counterstatement thereto, and shall reconsicier the application and the u...ptuo.e there-of, and shall then, with or without hearing the panies, as they may agree, decide-

(o) to reject the appiication; or(D) to register the trade mark; or(c) that he is prepared to register the trade mark subject to such amendments,

modifications, conditions or limitations as he aray cieem fit; or(d) to direct that the normal opposition procedure as hereinafter prescribed

be foilowed.

(2) If the registrar decides in terms of subsection (1) (c) that he is prepared to registerthe tracie nark subject to such amendments, mociifications, conditions or ilmitations as hemay deen fit, and the applicant does not accept such amendments, modifications, condi-tions or limrtations within such period as the registrar may deternine. the appiicant shallbe cieemed io have abandoneci his application.

(3) The registrar shail be entitled to take into consicieration such acimissions es eitheror loth of the parties nay be prepared to make, even if such acimissions are not inciucieci inthe notice of ooposition or ccunterstaterrent.

(a) No order shail be made in respect of the cosrs of the proceeiinss under thissection.

(5) No appeai shail iie against a decision cf the :esistrar siven uncier this section.

29. Formai hearing of opoosed appiications.-(1) In the e./enr cf the proceeciings norbelng determined in accoroance with the provisicns of section 13, or in i,he .'r.rr of tneregistrar directing that the eormal opposirion procedure be foilorved. e'ricience may beaiciuced by the parties in the prescribed manner.

(2) The registiar shall fix a ciay for the hearing of the appiication anci shail give noricethereof to the aopiicant anci the objector at iheir iesoective acidresses ior seryice.

(3) On the ciay so ixeC, or on any other day to which lhe heaing is acijourned, thereqistrar shall, on payment of the l'ee prescribeci, hear the appiicant anci rhe objecror ancitheir respective witnesses (if any) unless the evicience has beJn submitted in affidavit formand the registrar does not require or permit e.ricience to be given viva.toce, anci shaii cieciciewhelher the application is to be refused or whether it is to be granteci eirher with or wirhoutrncdifrcations or conditions.

(-t) The registrar may nake such orcier ts :o the costs cfjust anci iris order shail ce eiorceable in ail iesDects as lf itjucige of ihe court.

(5) The decision of lhe registrar shail be subject ro apceai :o the ccurt anci the pro-visions of section 6-: shail mutatis mutanriis aool,r.

30. Appeai against registrar's decision.-(i) Cn appeal ihe court shail hear the partiesand the iegistrar. if he desires to be hearci, and shaii make an orcier determining wherherand subject to what conciitions (if any) registration is to be permittei.

(2) On the heanng of an appeai under this section any partl/ il&,v, by speciai ieave oftile court, bring forward further evidence for the consideration of the court.

(3) (a) On an appeal under this section no furrher grouncis of objection to the regis-tration of a trade mark shail be allowed to be taken by t[e objector or the registrar, othertlan those so stated as aforesaid by the objector, nor shail the ipplicant be enritled to raiseany further grounds in support oihis appication, except Uy spiciai leave of the court.

ine procsedlngs as f,lay sesmwere 3 judgment of a singie

\. .J

Srarrrrss oF THE Rrpusuc oF SourH Arnrc.c. - Persxrs, Drsrcxs euo Copytrcnrss. 30-32 Trade tuIarks in South West Africa Act, No. 48 of 1973 ss. 30-32

(6) If any party, by special leave of the court, raises any further grounds and theother party decides in the light thereof not to pursue the proceedings, the court shall makesuch order as to costs as it may deem fit.

(a) The court may in its discretion require the appellant to give security for thecosts of the proceedings relative to the appeal and, in default of such security being given,treat the appeai as abandoneC.

(-<) In the case of proceeciings under this Part, the registrar may in his ciiscretionrequire either or both parties to give security for the costs of the proceedings and, in defaultof such security being given, may treat the opposition or application as abandoned.

PAR.T V

T^rll RrclsrER oF Taeor Vlelxs

-:1. Tae register.-(1) There shail be kept at the tracie marks office a iegister of tracjemar<s in wiricn shaii be enrereci particulars of-

(al ail aoplications to iegister trade marks anci all registrations of tracie markswiih the names and acidresses of their proprietors and cf all registered usersthereof, togerher with the ciate of :egistration and tle date of expiraion of rheregistration;

(,t) notifications of assignments, transmissions and disciaimen; and(t) any other matters ieiaring to registereC trade marks which may be prescribei.

il) The reg:'ster shail be ccmprisei oi'two Darts cailed respectively part A anci part B.

(3) Tae register kepr uncier the repealed iaw and e{sting at ttre commencement ofihis Act shail be inccr^corateC with and form part oi parr A of the register kept under thisAct.

(a) Tle iegister shail ccmprise ail tracie marks which are registerei or are cieenedto be iegistereC under this Acl anci shail inciicate rvhether tley are registereci in part A orpari B of the register.

(5) The tegister shail, on payment of the prescribed fees, and subjecr ro the provisionsof this Act, be open at a1l convenient times during offce hours to inspecion by the oublic.

(6) A certifreci copy of an entry in any register kept under this Act, shail, subjecr toany special arovisions io ihe contrary contained in this Act, be given to any perscn who ap-plies icr such a copy anci pa;rs lhe prescribed fee.

^{mendment of register.{1) The registrar mal/ correct any error in the legisteran officiai of ais ofrce.

(l) iie iesistiar Day, on ieguest naie in :he prescibed manner by the registeredproDnetor of e trade llark, and on pal/ment of the t'ee prescibed, amend or aiter the registerby-

(a') conecting any effor in the name or address of the regisrered ̂ Dropnetor oiihe rracie mark: or

aitering the name or acidress or adiress for service of the registereC prooietorwho has changed his name or address or address for service; orcanceiling the registration of ihe rracie mark; orstriklng out any goods or services or ciasses of goods or services from thosein respect of which the trade mark is registered; or

(e) entering a disclaimer or memorandum relating to the trade mark which doesnot in any way extend the rights given by the registration of the trade mark.

?tJ- .

made by

(,r)

(c)

(,i)

; - . . '1 , ' ; - l . i r ' . t i .d , - " - , . :

- \:\- ,,.,!r-s"lli .i 1 *:.,,ft|i I , .t'' -: (Issue No. ?)

; r,,,6,,,:.,a,#ir*ili,ri'*#',* r,r+,4,6ii:lr

4tl-\

\J

Srerurrs oF TIIE RrpL.suc oF Sourr{ Arruca - ParE\TS, DEsrcNs AND Copnlcsrss. 32-35 Trade Marks in Soutlr lV'est Africa Act, l,{o. 48 of 1973 ss. 32-35

(3) The registrar D&y, on request made in the prescribed manner by the registeredproprietor or a registered user of a trade mark, and on payment of the fees prescribed;correct any error in the register relating to such trade mark or enter therein any change inthe name or address of such registered user.

(a) Any decision of the registrar uncier this section shall be subject to appeai to theccurt.

33. General power to rectify entries in register.-(1) Any person aggrie'reci by the non-insertion in or omission from the register of any entry, or by any entry made in the registerrvithout sufficient cause or by any entry wrongiy renaining on the reeister, or by any erroror ciefect in any entry in the register, may appiy to the coufi or, at the option of the acpiicantand subject to the provisions of section 69, on payment of the fees prescibed in thepresclibed manner, to the registrar, for the desired relief and thereupon the court or :heregistrar, as ihe case may be, may make such order for making, expunging or varying theentry as to it or him may seem flt.

(2) The court or ihe registrar, as the case may be, m.ayr in any proceeiings uncierthis ;ection decide any question that it i:ray be necessary or expedient to decide in connectionwith the rectifrcation of the iegister.

(3) In the e'rent of the registrar being satisfied thar any enrry reiating to the regisra-:ion. assignment or transnission of a trace nark has been secured by fraud or erisrepresen-iaticn cr that any such entry was nad.e rvithout suttrcient cause or wrongly renains on rheregisier, he shail aiso rave locus stancii io appiy to the couri under the provisions of ihissection.

(4) Aly order of the court rectifying :he legister shall direct that noice of fre 1sgrifi-cation shail be sen'ei on the registrar, and the registrar shail, on receipt of the noticetogether wirh the aopiicarion on the form prescibeC, rectify the register accordingr.v.

(-{) The tower to iectify the register ccnferreC by this seciion shall inciuie power roaiter a registration in lari A of the register to x iegistlation in part B of the register.

3.{. Aiteration of registered trade mark.-{'i) The registereC proprietor of a rade markf,tral/, on payment of ihe fee prescribei, appiy in the prescdbei nanner to the regisuar forleave to aici to or aiter the tracie mark in any rranner not substantiaiiy aff"ecting the identirytherect, and the registrar nay refuse leeve or xtay grant it on such terms anci subject :osuch iimitations as he may think fit.

(2) (a) The registrar shall require the appiicant to acivenise the appiication in rher r o c n - i k o r i n ^ n n .J.rJUrrL,eLl 'rrcruuer and, if within the prescibeC peiod irom lhe tiate of the ad.rertisenentf,n)/ leison iodges a notice of opoosition to :he appiication in the prescribed mannerviththe iegistrar, the iegistrar sirail, after hearing the parties, if the;,' rvish to be heard. decicie;he natter.

(b) The provisions of sections 25 lo -:0 inclusive sirail mutatis mutanriis 3ppiyto any proceeCings uncier this section.

35. Fower to expunge or yary registration for breach of condition.-lf the registeredproprieror or registered user of a tracie mark ccntravenes or fails to observe any conciitionentered in the register in reiation thereto, the court or the registrar, as the case may be, mayon application to the court, or, at the option of the applicant and subject to the provisionsof section 69, to the registrar by any person aggrieved, or on appiication to the coun bythe registrar, make such order for expunging or varying the registration of the trade markas to lt or him mav seem f;t.

60i(Issue No. 7)

ir'.'-j

Sr,lrures oF THE REpratrc or Sourg Armce - Pargvrs. DrslcNS AND Ccpvrucgrss.'36-37 Trade Marks in South

'14/est Africa Act. l'{o. 48 of 1973 ss. 36-37

36. Removal from register and imposition of limitation on ground of non-use.{l) Sub-ject to the provisions of sections 16 (2) and 53, a registered trade mark DaY, on applicationto the court, or, at the option of the applicant and subject to the provisions of section 69,

to the registrar by any person aggrieveci, be taken ofr the register in respect of any of thegoods or services in respect of which it is registered, on the -rround either-

(a) that the trade mark was registered without any bonafrie intention on the part

of the applicant for registration that it should be useci by him in relation tothose goods or seryices, and that there has rn fact been no bona fide use ofthe trade mark in ieiation to those goods or services by any proprietor thereoifor the time being up to the date one month before the ciate oi the appiication;or

(r) that up to the date one month before the date of the appiication a continuouspeiod of five years or longer eiapseC duing which the tracie mark was aregistereci tracie mark and during rvhich there lvas no bona -fide use tlereciin reiation to those gccCs or services by any propietor therecf ior the tinebeing; or

(c) subject to such notice as '.-he ccurt or the registrer. as :he case may be, siraildirect, anci subject to the provisions of fte ieguiations. that. in the case cf a

trade mark legrstereci in the name of a bociy corDorate. or :n the name of a

natural person, sucn bcdy ccr-Dorate has been dissoi.rei. or such naturai per-

son has died, nor less than two years prior to the date ot ihe application ancithat no application for registration of an assignmert cr suce :iaoe mark has

been macie in terns of seclion 5i:

Proviciei that (except where ihe appiicant b.as been pernrttei uncier sec'.ion 17 tl) to register

a resem.biing trade mark in respect cf the goccis or ser-zices in question cr wirere ihe registraror the ccurt, as the case may be, is oi opinion ihar he may properiy be per:laitteci so toregister such a trade marK), the regisriar or the ccurt may rel'use 3n eppiication nade

unter paragraph (c) or tb) of rhis subsection in reiarion to any goods or ser.rices, if it is

shown lhat there has been, before the reievant date or during the reievanr peiod, as iJte

case ma)/ be, bona f,cie use of the tracie nark by any propietor thereoi icr the time being

in relation io goods or serrices in iespect of wirich the irade marK is ieg:sterei: Proviciei

funher thar the registrar or couit may lefuse en appiicarion aaie unier paragraph ic'l

of this subsection in reiation to any goocis or services lf it is sirown :har ihe rrade marj< ls

useC or proposed to be useC in reiation to such goois or services by e successor in title of

the registereC proprietor.

(:) An aopiicant shail not be entitled to reiy for the pur?oses of subsection (i) iD)on any non-use of a tiade mark rhat is shorvn :o have been due to sceciai circumstances in

the traoe anci not to any intention not to use or to rbandcn the traie nark in ieiarion to ihe

gooCs or seriices to which the appiication ieiates.

PAR.T Vi

R;crsrrrTroN AND tis lrnrc:s

3i. Registration.-(1) When an apoiicarion for regisuation cf a tracie nark in part

A or in pan B of the register has been acc:pteci anci eiverdseci in the prescribed manner anci

either-(a1 the application iras not been opposei and the time ior notice of opposition

has expired; or

(b) the appiication has been opposeci and has been granteC,

the registrar shall register the trade mark in pan A or part B, as the case Inay be, oi the

register as on the date of the lodging of the applicaCon for registration, and that date shall

l i

Srarures oF THE Rlpusuc oE Sounr Arruce - ParrNrs, DrslcNs AND Copyrucurss.37-39 Trade Marks in South West Africa Act, No. 48 of 1973 ss. 37-39

for the purposes of this Act be deemed to be the date of the registration : Provided that wherethe registrar is satisfied that the trade mark has been accepted in error or that, in the specialcircumstances of the case, the trade mark should not be registered or should be registeredsubject to conditions or limitations or to additional or different conditions or limiiations,he may withdraw the acceptance and proceed as if the application had not been accepted.

(2) On registration of a trade mark, the registrar shall issue to the applicant in theprescribed form a certificate of the registration thereof sealed with the seii of the trademarks office.

38. Certain trade marics to be associated so ts to be assiguable and transmissible as awhole only.-(l) Trade marks that are registered as, or thar are deemed by virtue of thisAct to be, associated trade marks shall oniy be assignabie or transmissible rogether and notseparateiy, but they shali for all other pur^Doses be deemed to be registered as separate trademarks.

(2) If a trade mark that is registered or is the subject of an appiication for registrationso resembies anothel trade mark that is registered or is the subject of an appiication forregistration in the name of the same proprielor that the use of both sucir trade marksby difrerent persons in relation to goocis or serrices in lespect of which they are respectivelyregistered or proposed to be reglstereri wouici be iikely to deceive or cause conruiion, theregistrar may at any time iequire that the iracie narks shail be entered in the resister asassociated tracie marks.

(r:) Any decision of the registrar under subsection il) sirail be subject to appeal tothe court.

(4) When a tracie nark and any part or paris rhereof are by virtue of section 22registered as separate trade narks in the aame of the same proprietor, they shail be deemedto be, anci shail be registeled as, associateci tracie marks.

(5) Any association of a tracie mark with any other racie mark registereri in the nameof the same proprietor shail be deened to be an association with ail marks associated witithat other trade mark, uniess the registrar or ihe court othervise decicies.

(6) On appiication made in the prescibeC nanner by the registered proprietor oftwo or more traCe marks iegisteleC as associated. trade marics, the registrar may, on pay-ment of the fee prescribei, ciissoive the association as regarcis any of them if he is satiafiedthat there would be no likeiihood of deception or confusion berng caused if that trade markwere used by another person in ielation to any of &e goocis or ser-rices in respect of which itis registered, and may amenci the register accordingly.

(7) Any decision of fte registrar uncier subsection (6) sirail be subiect to aDDeal tothe court.

39. Use of one associated or substantiaily identical trade mark equivalent to use ofanother.-(l) When under the provisions of this Act use of a registered trade mark is

fleuired to be proveci for any purpose, the registrar or the ccurt, as the case may be, may,if and so far as he or it cieens fit, accept proof of the use of an associated registered trademark or of the trade mark with adciitions or eiterations not substantially affecting its iden-tity, as equivaient to proof ot the use resuired to be proved.

(2) The use of the whoie of a registered trade mark shail for the purposes of thisAct be deemed to be the use also of any registered trade mark being a part thereof, iegisteredin the name of the same proprietor by vinue of section22.

(Issue No. 7) 60-<

Stenrrrs oF THE Repusuc oE Sourri Arnrce - Parpms, DrsrcNs exo Copyrucnrss. 40*f4 Trade Marks in South West Africa Act, No. 48 of 1973 ss. 40-44

4. Limitation of trade mark as to particular colours.-(l) A trade mark may belimited in whole or in part to a particular coiour or colours and, in case of an applicationfor the registration of a trade mark, the fact that the trade mark is so limited shall be takeninto consicieration by any tribunal in deciding whether it is distinctive or not.

(2) If and so far as a trade mark is registered without limitation as to colour, it shallbe deemed to be resistered for all colours.

41. Words used as rame or description of an article or substance.-(i) If a trade markconsists of a word which has become generaily recognized by the public as the only practic-able name or description for any article or substance or service for which it is registered ancihas commoniy been so used by persons carrying on business in relation to such articie orsubstance or service (not being use in reiation to goods or service connected in ihe ccurse oftrade with the proprietor or a registered user of the trade mark, or, in the case of a certifi-cation mark. goods or services certifred by the proprietor), the registration of such traciemark shail for the purooses of section 33 be deemed to be an entry wrongiy remaining onthe register for the article or subsrance or service in question.

(2) If a trade mark contains a word to which the circumstances contempiateci insubsection (1) are appiicabie. the registrar or the court, in deciding whether such trade markshali iemain on the register for the articie or substance or service in question may, as aconciition of its remaining on the register. require a disciaimer to be enrered of any rignt tothe exciusive use of such word in relation to the said article, substance or service, anci sucndisciaimer shail be cieenei to irave been maCe underthe provisions of section 18.

(3) The provisions of subsections (1) and (2) shail apply respectiveiy to trade marksconsisting of or containing a worci which is the only practicable name or ciescription of anarticle or substance fcr wirich such traCe mark ',vas registered, if such articie or subsmncewas the subject of letters patent in the territory which have expired or lapseci.

42. Registretion in part A of register to be conclusiye as to validity after seyen years.-In ail legal proceeCings relating to a iraoe mark registered in part A of the register (inciuciingappiiattions uncier section 33), the original registration of the trade mark in part A of theregister shaii. after the expiration of seven vears from the date of that registration, be takento be vaiici in ail resoects, unless-

(ct) that registiation was obtained by lraud; or(bl :he tlacie marK offends against the orovisions of either secrion 16 or section 4i.

PART Vii

IxrRrxceveNr

"13. Registradon e condition precedent to an action for infringement.-No person shailbe enritled to institute any proceedings to prevent, or to recover damages for. the infringe-ment of a trade mark not iegistered under this Act: Provided that nothing in this Act shailaffect the rights of any person" at common law, to bring an action against any other personfor passing off goods or serrices as those of another person.

4. Infringement.{1) Subject to the provisions of subsections (2) and (3) of this sectionand section 45 and 46, the rights acquired by registration of a trade mark shall be infringedby-

(a) unauthorizeci use as a trade mark, in relation to goods or services in respectof which the trade mark is registered, of a mark so closely resembling it asto be likeiy io tj.eceive or cause confusion; or

607

SrerurEs oF THE Rrpunuc or Sourn Arruce - Perexrs, DrsrcNs AND Copynrcnrss. 44{7 Trade Marks in South West Africa Act, No. 48 of 1973 ss,447

(b) unauthorized use in the course of trade, otherwise than as a trade mark, ofa mark so closely resembling it as to be likely to deceive or cause confusion,if such use is in relation to or in connection with goods or services for whichthe trade mark is registered and is likely to cause injury or prejudice to theproprietor of the trade mark:

Provided that in the case of a trade mark registered in part B of the register, no interd.ictor other reiief shall, for the purposes of paragraph (a) of this subsection, be granted if thedefendant establishes to the satisfaction of the court that the use of which the proprietor ofthe registered trade mark complains is not likely to be taken as indicating a connection inthe course of trade between the goods or services and some person having the right eitheras proprietor or as registered user to use the trade mark.

(2) The right to the use of a trade mark given by registration shail be subject to anyconditions or iimitations entered in the register, and shall not be infringed Uy ine use ofany such mark as aforesaid in any mode in respect of or in relation to goocis to be sold orotherwise traded in or services to be performed in any place, or in relaiion to goods to beexported to any market, or in any other circumstances, to which, having iegard to anysuch limitations, the registration does not extend.

(3) The use of a registered trade mark, being one of two or more registered. trademarks that are identical or closely resemble each other, shall in the exercise of thr right tothe use of that trade mark given by registration, not be deemed to be an infrinsenent of theright so given to the use of any other of those trade marks.

. '15. Saving of vested rights.-Nothing in this Act shall entitle the proprietor or a

registered user of a registered trade mark to interfere with or retain the use by any person ofa tracie mark identical with or closely resembiing it in relation to goods or serviceiin relationto which that person or a predecessor in title of his has continuouslv used. that trade markfrom a date anterior-

(a) to the use of the first-mentioned trade mark in relation to ihose goods orservices by the proprietor or a predecessor in title of his; or

(b) to the registration of the first-mentioned trade mark in respect of those goodsor services in the name of the proprietor or a predecessor in title oi his,

whichever is the earlier, or to object (on such use being proved) to that person being put onthe register for that identical or closeiy resembling trade mark in respeit of those gobar otservices under section l7 (2).

46. Saving of use of name, address or description of goods.-No registration of atrade mark shail interfere with-

(a) r:n'1 bona fde use by a person of his own name or of the name of his place ofbusiness, or of the name of any of his predecessors in business, or of the nameof any such predecessor's piace of business; or

(b) the use by any person of any bona frie description of the characrer or quaiityof his goods or services.

PART VIII

DunenoN AND RENEwAL oF R-ecrsrnanoN

47. Duration and renewal of registration.-{1) The registration of a trade mark shallbe for a period of ten years, but may be renewed from time to time in accordance with the

(Issue No. 7)

{ ' i ,

S1anrrrs oF THE Rrpusuc oF SourH Arruca - PaTENTS, DEsIcNS AND Copvmcsr

ss. 47-48 Trade Marks tn South .lV'est

Africa Act, No. 48 of 1973 ss. 47-48

provisions of this section: Provided that in the case of a trade mark registered before the

commencement of this Act, the provisions of this subsection shall have effect with the sub-

stitution of a period of fourteen years for the said peiod of ten years.

(2) The registrar shall, on application made by the registered proprietor of a regis-

tered trade mark in the prescribed manner and within the prescribed period, renew the

registration of the trade mark for a period of ten years from the date of expiration of the

original registration or of the iast renewal of registration, as the case may be, which date is

in this section referred to as "the expirstion of the last registration".

(3) At the prescribed time before the expiration of the iast registration of a trade

mark, the registrar shall send notice in the prescribed manner to the registered proprietor

at his ad.dress for service, of the date of expiration and the conditions as to payment of fees

and otherwise upon which a renewal of registration may be obtained. and. if at the expiretion

of the period prescribed in that behalf ihose conditions have not been duly compiied with.

the registrar may remove the trade mark from the register subject to such conditions, if any.

as to its restoration to the register as may be prescribeC.

(4) Where a trade mark has been removed fiom the register for non-payment of the

fee for renewai, it shail nevertheless, for the purpose of any appiication tor the registrationof a trade mark during one yesr next following the date of the expiration of rhe last registra-tion, be d.eemed to be a trade inark that is already on the register: Provided that the fore-going provisions of this subsection shail not have effect where the registrar is satisfiecieither-

(o) that there was no bonafirie trade use of ihe trade mark that iras been renoveci.during the two years immeciiateiy preceding the date of the expiration of the

last registration; or

(r) that, notwithstandin g any such use. no cieception or confusion is likeiy to

arise from the use of the trade mark that is the subject of the application for

registration.

PART IX

R.rcrsrsmo Usrns

48. Registered users.{l) (o) Subject to the provisions of this section. a person other

than the proprietor of a trade mark may be registered as a registered user thereof in respect

of ail or iny of the goocis or services in respect of which it is registered (othenvise than as

a ciefensive trade mark), and either with or without conditions or restrictions.

(b) The use of a trade mark by a registered user thereof in relation to goois or

services wirh rvirich he is ccnnected in the course of trade and in respect of which for the

time being the trade mark remains registered anci he is registered as a registered user, being

use such as complies with any conciitions or iestrictions io which his registration is subject.

is in this Act referred to as the "permitte(i use" thereof.

(2) The permitted use of a trade mark shail be deemed to be use by the proprietor

thereof, and shlfl not be cieemed to be use by a person other than the proprietor for rhepurposes of section 36 or for any other purpose for which such use is material under ihis

Act or at common larv.

(3) Subjecr ro any agreement subsisting betrveen the parties, a registered user of a

trade mark shail be entitled to call upon the proprielor thereof to institute proceedings to

prevent infringement thereoi and, if ihe proprietor refuses or negiects to do so within two

months after being so called upon, the iegistered user may institute proceedings_ for in-

fringement in his o*n name as if he were the proprietor, making the proprietor a defendant,

but a proprietor so cited as a defendant shall not be liable for any costs uniess he enters an

appearance and takes part in the proceedings.

Clssuc No. 7)

Sra.rurrs oF THE Rrpunuc oE Sourg Arnice - Persurs, DesrcNS AND Copyrucgrs. 4[f Trade Marks in South W'est Africa Act, I,[o. 48 of 1973 s. 48

(a) Where it is proposed that a person shouid be registered as a registered user ofa trade malk, the proprietor and the proposed registered user shall apply in writing to theregistrar in the prescribed manner, and the appiication shall be accompanied by the pre-scribed fee, and they shall furnish him with a sworn declaration macie by the proprietor,or by some person authorized to act on his behalf and approveC by the registrar-

(o) giving particuiars of the relationshifr, existing or proposed, between ihe pro-prietor and the proposed registered user, incluciing carticuiars showing thedegree of control by the proorietor over the permitted use ivhich their reia-tionship will confer and whether it is a term of their reiationship rhat theproposed registered user shall be the soie registered user or that there shailbe any other restriction as to persons for whose registration as registeredusers appiication may be made;

(D) stating the goods or services in respect of wnich ie_sistration is proposeci;

(t) stating any conCitions or restrictions procoseci ivith respect io the charac-teristics oi ihe goods or services. to the mocie or ciace of permntei use. orto any other matter; and

(,1) stating whether the permitteC use is to be for a penoci or rvithout iimit ofperiod, and. if for a peiod. the duration therect'.

and with such further Cocuments. information or evicience 3s mav be reguirei under thereguiations or by the registrar.

f5) When lhe requirements of subsection (-1) have ceen compiieC ntth. enci rf iheiegistrar, after consiciering the information furnisheci :o him. unCer rhar subsecrion, issadsneci that in the circumstances the use of the tracie narK in ieiation to the oroocseC gooCsor serrices or any of therr by the proposed registelei user, subject to any ccnciirions orrestrictions wirich the registrar thinks proper, would not be ccnriary to the pubiic inreresr,the regrstrar may register the proposed registereci user as a iegisiereci user in iescect cf :hegooCs or ser.,'ices as to wirich he is so satistieC.

(6) The iegistrar sbail refuse an apoiication under the provisions of this section ifit eopears to Um that ihe qrant thereof wouid tend to faciiitate lraricking in a traie nark.

(7) The registrar shail, if so requireC by an applicant, iake sreps to ensure rhar inform-ation iurnished for the DurDoses of an apolication under ihe provisions of iiis seclion {otherthan natters entered ;n ihe register), is not ciisclosed to rivais in :iade.

(3) Without prejucice to the provisions of secticn i3. the registiation cf a :ersonas a iegistered user-

(.a'l rnay be 'rarieci bir the regisrar es regaris ihe ,soods or selrices in iespect ofwhich it iras e.fect, or any conditions or restiicrions reiating io ir, on appiica-tion in rvriting in the prescibei manner and on payment of the prescribedfee by the registered proprietor of the tracie mark to which the registrationreiates;

(b) may be canceiled by the registrar on appiication in writing in the prescribedmanner anci on payment of the prescribed iee by the registered proprietoror by sucii registered user or by any other registered user of the tracie mark;

(c) may be cancelled by the registrar on application in writing in the prescdbedmanner and on payment of the prescibeC fee by any person on any of thefoilowing grounds, that is to say:

@''aii;;'^, .,",'*;ilir-.-.,

Sre.rurss oF THE Repr-r'rrtc op Sorrrg Arruce - P.rrsvrs, DEstcxs AND Copvnrcsrss. 48{9 Trade fufarks in South West Africa Act, I,{o. 48 of 1973 ss. 48{9

(i) that the registered user has used the trade mark otherwise than by wayof the permitted use, or in such a way as to deceive or cause confusion,or to be likely to deceive or cause confusion;

(ii) that the proprietor or the registered user mis-represented, or faiied todisciose, some fect material to the application for registration, or thatthe circumstances have materially changed since the date of the registra-t ion;

(iii) that the registration ought not to have been effected, having regard tori_ehts vested in the applicant by virtue of a contract in the performanceof which he is interested;

(d) may be canceiled where the trade mark in respect of which such person hasbeen registered has been assigned and appiication has in terms of section 51 (1)been made for registration of the assignment.

(9) Provision shail be made by reguiation for the notification of the registration ofa person as a registereC user to the registerei proprietor of the tracie mark and for theadvertisement thereof, and for the notifrcation of an appiication under subsection (8)

to the registered proprietor and each registered user (not being the appiicant) of the trademark, and for affording the appiicant in such an applicetion, and ail persons who intervenein the proceedings in accordance with such regulations, an opportunitl' of being heard.

(10) The registrar may at any time cancel the iegistration of a person as a registereduser of a trade mark, in lespect of any goods or ser','ices in respect of wirich the tracie markis no longer registered.

(11) Any decision of the registrar uncier the provisions of this section shail be subjectto appeai to the court.

(i2) Nothing in this section shall con-fer on a registered user cf a tracie mark anyassignabie or transmissibie right to the use thereof.

(13) The expression "permitted use" in subsection (2) shail be deeneC io inciucie theuse of a trade mark before eny person has been entered in the regisrer as rhe registeredowner thereoi rf-

(a) an application to register the person who has so usei ihe tracie raark, as aregistered user of the trade mark is maoe within one l/ear after the commence-ment of this Act; and

(b) that person has used the trade mark in connection with goods or sersicesin respect oi which he is so registered, and, if the registration is efr'ecleCsubject to any ccnciirions or limitations, he has useci the trade mark in amanner substantiallv in accordance with such conditions anci limitations.

PAR.T X

AsslcNivlrvr

,{9. Powers of and restrictions on assignment end transmission.-(1) Notwithstandingany rule of larv to the ccntrary, a re-sistered tratie m.ark shail be, and shail be deemed alwaysto have been, assignable anci transmissibie either in connection with or without ihe goodwiil

of the business concerneci in the goods or services for which it has been registered.

(2) A registereC trade mark shail be, and shail be deemed aiways to have been,assignable and transmissibie in respect of either ail the goods or services in respect of whichit is registered, or was registered. as the case may be, or some (but not all) of those goodsor services.

(3) The provisions of subsections (1) and (2) shail have effect in the case of an un-registered trade mark used in reiation to any goods or services as they have effect in thecase of a registered trade mark registered in respect of any goods or services if at tle effective

Sr,c,Tt"rEs oF THE REpugrtc or Sourg Arnlca - Parrxts, DrstcNS AND CopyRlcnrs. 49 Trade Marlcs in South West ,4frlca Act, Aro. 48 of 1973 s. 49

date of the assignment or transmission of the unre-eistered trade mark it is or was used. inthe same business in which a re-sistered trade mark is or was used, and if it is or was assignedor transmitted at the sarne date and to the same person as that registered. trade mark is orwas assigned or transmitted aad in respect of goods or services all of rvhich are goods orservices in relation to rvhich the unregistered trade mark is or was used in that business andin respect of which that registered racie mark is or rvas assigned or transmitted.

('1) Notwithstanding anything in subsections (l), ( i) and (3) contained, a trade markshall not be, or be deemed to ha', 'e been. assienable or transmissibie in a case in rvhich.as a result of an assignment or lransmission, there woulci in the circumstances subsist, orhave sui:sisteC, whether under the common larv or by re"ristration, e:lciusive rights in rnorethan one of the persons concerneci lo lhe use of trade marks which so resenbie each otherthat the use thereof bv different perscns in relation to the goods or serv'ices in respect ofwhich such exciusive rights subsist orvould. ha.ie subsisted would be, or wouid have been,iikeiy to deceive or cause ccnfusion: Provicieci that rvhere a trade mark is. or has been,assigned or transmitted in such a case as aforesaid, the assignment or transmission shallnot be deeraed to be, or to ha"'e Desn. invaiid under this subsection if the exciusive rightssubsisting as a resuit therecf in the persons ccncerneC respectively are, or were, havingregard to the limitations imposed therecn. such es nor to be exercisabie by two or moreof those pefsons in reiation to goois :c be sold, or orherwise traded in, or services to beperiormeC. within the territorlr iorherwise than icr export iherefrom) or in reiation to,?oods to be exporteci to ihe same marxet outsid.e the rerritory.

(5) The proprietor of a reqisterec :racie mar.K 'vho inrencis to assign it in respect ofanir goods or senrices in ;espect oi ivhicn it is registerei nay submit to the regisr.ai in theprescibeC llanner a statement cf case setiing out lhe circumstances, anC the registrar ma;ron payment oi the fee prescribei issue io him a certincare srating whether, having regardto the goods or services and the trade mari<s ieferreci to in rhe statement of case, the pro-posed assignment of the first-mentionei riacie nark wouid or would not be invaiid undersubsection (4), anci a ceftificate so issueC sirail. subjecr ro the orovisions of rhis section as toaDDeal, and unless it is shorvn that :he ceftificate was obtained by fraud. or misrepresentation,be conclusive as to the vaiidiqr or in'raiiciity undel the :aici subsection of the assignment inso far as such vaiiditir or invaiiciit;r depends uDon the facts ser out in the statement of case,but, as regards a certificate in lavour of vaiiciity, onirv if appiication for registration of thetitle of the person becomrng entitiei ;s nade under section 5i within six months from thedate on rvhich the certiflcate is issueci.

(6) NotwithstanCing anything;n subsections (i), (:) and (3) contained, a tracle markshall not be assignabie or transmissibie in 3 case in whicn, es a result of an assignment orlransmission thereof. thele wouici 'n :ire circumstances subsist. whether under the commoniaw or by registration, an exciusive i ight in one of rhe Deiscns concerned to the use of thetrade mark l imiteci io use in relation io goois to be sold, or cthenvise traded in, or servicesto be performei, in I piace or piaces in the territory, anci an exciusive right in another ofthose persons to the use, in reiation to gooos to be soici. or otherwise traded in, or servicesto be performed, in another place or cthcr ciaces in the territory, of a trade mark so resemb-ling the first-mentioned trade mark iirat the use in the same place of both such marks inrelation io the goods or services in iesDect of which such exciusive rights respectiveiy subsistwouid be likely to deceive or cause confusion: Plovicied that on appiication in the pre-scribed manner by the proprietor t:f :r tracie nark rvho intends to assign it, or of a personwho claims that a trade mark was irensmitted to him or to a predecessor in title of his aftsrthe commencement of this Act, the regisrrar, if he is sarisfied. that in all the circumstances

(Issue No. 7) 6r7

Sr.c.rurEs oF THE Rrpusuc or Sours Arnrce - ParrNts, DsstcNS AND Copvrucsrss. 49-52 Trade Marks in South l|/est Africa Act, No. 48 of 1973 ss. 49-52

f.'<i,

the use of the trade marks in the exercise of the said rights would not be contrary to thepublic interest, D&y, on payment of the fee prescribed, approve the assignment or trans-mission, and an assignment or transmission so approved shail not be deemed to be, or tohave been, invalid under this subsection or under subsection (a) of this section, provided thatin the case of a registered trade mark application under section 51 for the registration of thetitle of the person becoming entitled is made within six months from the date on which theapproval is given or, in the case of a transmission. was made before that date.

(7) I.{otwithstanding anything contained in subsections (1) and (2) and subject tothe provisions of subsections (4) and (6), where a trade mark which is the subject of a pendingappiication for registration has subsequent to the date of the appiication been assigned ortransmitteci, the registrar i lay, on application in the prescribed manner and subject to suchconditions as he may cieem necessary, allow, on payment of the fee prescribed, the personor persons entit led to such trade mark by reason of such assignment or transmission, to besubstituteci as appiicant or appiicants for registration of the trade mark.

(8) Any decision of the registrar under this section sirall be subject to appeal to thecourt.

50. Power of registered proprietor to assign and give receipts.-Subject to the pro-visions of this Act, the person for the time being entered in the register as proprietor of atrade mark shall, subjecl to any rights appearing fi'om the register to be vested in any otherperson. have porver to assign the trade nark and to give effectual receipts for any considera-tion lor an assignment thereof.

51.. R.egistration of assignrnents and transmissions.-{1) Where a person becomesentitleci by assignment or transmission to a iegistereci trade mark, he shall n:ake appiicationto rhe resistrar on the form prescribed to register his title, and the registrar shall on receiptof the appiication tcgether wirh the fee prescibed and of proof of title to his satisfaction,register him as the proprieror of the trade mark in respect of the goods or services in respectof which the assignment or transmission has efr'ect, anci shall cause particuiars of the assign-ment or transmission to be enterei in the register.

(2) Ever,v appiicetion ro register an assignment or transmission in terms of subsection(1) shall iecite the efrective iate of sucn assignment or transmission and, if appiication isrnade trrore chan tweive months after such date. the applicant shall be liabie to pay suchpenaify as may be prescribed.

(3) Any decision oi the registrar uncier this section shall be subject to appeai to thecourl.

(4) Except for the purposes of an appeal under this section or of an appiication unciersection 33, a ciocument or instrument in respect of lvirich no entry has been made in theregister in accordance with ihe provisions of subsection (1) of this section, shail not beadmitteC in evidence in tn./ court in oroof of the tit le to a trade mark unless the courtothenvise directs.

PART XI

sz. certificerion marks -,,i^ J:ililt:'Tt*rr,"guish, in the course of trade.goods or services certif;ed by any person in respect of origin, material, mode of manufactureor performance, quality, accurac:r or any other characteristic, as the case may be, fromgoods or services not so certified, shall, on application in the manner provided for in thissection, and subject to the provisions thereoi be registrable as a trade mark in part A ofthe register in respect of such first-mentioned goods or services, in the name, as proprietorthereof, of that person: Provided that a mark may not be so registered in the name of aperson who carries on a trade in goods or services of the kind in question.

6 1 9

i t

Srarurss oF THE Rrpusuc or Sours Ar"ruce - PereNrs, DesicNS AND Copynrcnrs. 52 Trade Marks in South lfiest Africa Act, I,{o. 48 of 1973 s. 52

(2) An application for the registration of a mark under this section shall be made tothe registrar in the prescribed manner, and may be made by any governmenr or provincialauthority or any person desiring to be registered as the proprietorihereof.

(3) In determining whether a mark is adapted to distinguish goods or services as iscontemplated in subsection (1), regard may be had to the extent to which-

(a) the mark is inherently adapted so to distinguish the goods or services inquestion: and

(b) the mark is in fact adapted so to distinguish, by reason of the use rhereof orof any other circumstances, the goods or services in question.

(4) There shall be submitted to the registrar ruies (which shail thereupon become partof the aoplication) stating the circumstances ln which the proprietor concerned is to certifygoods or services as contempiated_in subsecrion (1) and to auihorize the use oisuch mark,and othenvise governing lhe use tirereof.

(-<) The provisions oi subsections (2) and (4) ro (7), both inciusive, of section 20,shail have ei1^ecl in reiation to an appiication under subsection (1) cf this secrion as they haveefect in reiation to an acoiicetion uncier subsection (1) oithe said section 20.

(6) In the exercise of his powers under subsection (5) of this section the registrar shalihave regard io the same considerations, so tbr as the.v are relevant, to which he wcuici haveregarC tf the appiication ',vere an apoiication und.er secrion :0 (1) and to any other reievantconsicierations. inciuciin g-

(a) the iesirabiiiry of ensuring thar a cerrificaticn nar^k shail ccmprise someinciication ihat it is such a mark:

(b) the ccmoetenc',/ of the appiicant io ceriif,r' rhe gcod.s or ser.,,ices in respect ofwiricir the inarl< is to be registereci:

(r) rhe adequac;.' of the ruies in ouesticn; anci(d) the acivantage of the pubiic,

and may cail to his essistance one or nore Dersons. who shail rerfome rhe prescribediunctions.

(7) The ruies iei-elred to in subsection (-1) shail arter the acceptance of rhe appiicatronbe ocen to insirection in ihe same manner as the register.

(8) The crovisions of seclions 21 .25, 26 to 30, both inciusive. and 37. shaii have efectin ieiation to en appiication under subsection (2) of this secticn as rhey have effecr in reiationto an apoiicarion uncier section 20 (1).

(9) The ruies ieterrei io in subsection (-t) may, on the epoiication of ihe registereiproprietor concerned, be aitereci by the registrar.

(10) The registiar rra)/ require an anplicatron unier subsecrion (9) to be aciveniseCin the presciibed. inanner :n eny case where ir ao"."rs :o him io be expedienr so to do. andit-, where the registrar:equires an apolicarion t;ie so acivertisei. any person gives, withinihe presciibeci time. nctice io the registrar of opposition ro rhe apoiitition, th-e provisions'cf sections 26 to -:0. both inciusive, shal7 mutoiii *ttronriis appiy,lo ,o t'ar as they can beappiied.

(i 1) Subject to the provisions of this section, the provisions of this Act, except theprovisions of secticns 24 and 48, subsections (,1) to (7), borh inclusive, of section 49, andsection 73 shall. except in so far as is otherwise provicied in this Act, and in so far as theycan be applieci, appi-v io a certification mark.

- (l?) The power to order rectification of the register conf'erred by secrion 33 shallinciude, in relarion to certification marks, rectification on the ground-

(o) that. in the case of any goods or sen,ices in respect of which the mark isreglstered. the proprietor is no longer competent to certify those goocis orseivices as is contemplated in subsection (i)J

(Issue No. 7) 621

l _ . . ,\ ,

Sre.rures oF THE Rrpust,rc or Sourg Arrucl - Parexts, DrslcNS AND CopvnlcHrss. 52-53 Trade Marks in South West Africa Act, No. 48 of 1973 ss. 52-53

(b) that the proprietor has failed to observe a provision of the rules which it was

his duty to observe;

(c) that it is no longer to the advantage of the public that the mark shouid be

registered; or

(d) that the advantage of the pubiic demands that, if the mark remains registered,the rules in question shouid be varied.

(13) A certification mark shall not be assignable or transmissibie otherwise than with

the consent of the registrar, who may grant his consent subject to such terms and conditions

as he may think fit.

(1a) Subject to the provisions of section 69, the court ffi&Y, on the application of the

registrar or of any person ag-9rieved, and the registrar may. on the appiication of any person

aggrieved, make such order as it or he thinks fit for varying the rules which govern the use

of such mark.

(15) There shail be a right of appeal to the court in the prescribed manner against

refusal by a registered proprietor of a certification mark to certify goods or services, or to

authorize the use of the certification mark, in accordance rvith such ruies.

(16) A person called to assist the registrar in terms of subsection (6) shal1 be entitied

to the prescribed remuneration.

PART XIi

DeFexstve Tnaon lVlenrcs

53, Defensive registration of well-known frade marks.-(l) Where the re-eisrrar is of

opinion that, by reason of the extent of use or of any other circumstances, a trade nark

registered in part A of the register rvouid, if used in reiation to goods or services other

thin the goodi or services in respect of which it is registered, be likeiy to be taken as indicat-

ing a connection in the course of trade between the first-mentioned goods or services and

the proprietor of the registered trade mark, then, notwithstanding that the proprietor does

not use or propose to use the trade mark in relation to the first-mentioned goods or services

and notwithstinding anything in section 36 contained, the trade mark D&Y, on application

by the proprietor in the prescribed manner, and on payment of the fee prescribed, be

rigisterJd in tris name in lespect of the first-mentioned goods or services as a defensive

ttid. mark, and such a trade mark, whiie so registered, shall not be liable to be taken ofr

the register under section 36 in respect of those goods or services.

(2) The registered proprietor of a trade mark may appiy in the prescribeci manner for

the registration thereof in respect of any goods or services as a defensive trade mark, not-

withstinCing that it is already registered in his name in respect of those goods or services

otherwise thin as a defensive trade mark, or may appiy f or the registration therecf in respect

of any goods or services otherwise than as a defensive tracie mark notwithstanciing that it

is already registered in his name in respect of those goocis or services as a defensive trade

mark, in each case in lieu of the existing registration.

(3) A trade mark re,eistered as a defensive trade mark and that trade mark as other-

wise regiitered in the name of tne same proprietor shall, notwithstanding that the respective

registritions are in respect of different goods or services, be deemed to be, and shall be

registered as, associated trade marks.

(a) On application to the court or, at the option of the applicant and subject to the

provisions of seition 69, to the registrar by any person aggrieved, the registration of a trade

mark as a defensive trade mark may be iancelied on the ground that the requirements of

subsection (1) of this section are no longer satisfied in respect of any goods or services in

reipect of which the trade mark is regist-red in the name of the same proprietor otlerwise

than as a defensive trade mark, or -ay be cancelled with regard to any goods or services

(lssuc No. 7)

t .

Sranrrrs oF THE Rgpusuc or SowH Arnrc.r - Parexrs. DesicNS AND Copymcsrss. 53-57 Trade Marks in South West Africa Act, |io. 48 of 1973 ss. 53-57

in respect of which it is registered as a defensive trade mark on the ground that there isno longer any likelihood that the use of the trade mark in relation to those -eoods or serviceswould be taken as indicating a connection such as is mentioned in subsection (1) of thissection.

(5) The registrar may at any time cancei the registration as a defensive trade markof a trade mark of rvhich there is no longer any registration in the name of the same pro-prietor otherwise than as a defensive trade mark.

(6) Except as otherwise expressiy provided in this section, the provisions of thisAct shall appiy mutatis mutandis in respect of the registration or cancellation or the registra-tion of trade marks as defensive tracie marks and of trade marks so registered as they appiyin other cases.

PAR.T )GII

PowEns rxo DurrES oF Rtclsrnr-n

54. Yenue of proceedings.-The place where any proceeCings before the registrarunder this Act are to be hearci and determined in any particular case shail be dererminei bythe registrar after consuitation rvith the partlr or parties concerned, and such proceedingsshall be heard anci cietermined b,v him at lhat piace.

-i5. General powers of registrar.{1) The registrar may, for the purposes of this Act-(a) receive evid.ence anci cietemine whether and to wirat extent it shall be given

by afflciavit or viva i,oce uron oath;

{b) summon wimesses anci issue commissions de bene esse;(c) order disccvery or inspection, and iequire the due prociuction of ciocuments;(d) consicier any interiocutory or other matters as nray seem exoeCient;(e) award costs against any party io any proceedings before him,

and generally the re-sistrar shail in connecdon with any proceedings before him have ailsuch powers and jurisdiction as are possesseci by a single judge in a civii action before thecourr.

(2) Where e:\press provision is not contained in this Act on any matier of procedure,the registrar shail have recourse io the ruies governing procedure in the court.

(-t) Whenever by this Act any pericci is specifieci within wirich any act or thing isto be done, the registrar rna,v, uniess othelwise expressly provicied, extend the period eitherbercre or rfter its expiration.

56. Power of regisnar to allow lmendment of any document.-(1) The registrar may atanyr time before registraticn of a tracie mark permit the amenciment of any ciocunentrelating to any apoiication or proceedings before him on such terms as to costs or other-wise as he thinks just.

(2) If rights in a trade mark wirich is the subject of a pending appiication have beenacquired by a body corporate subsequent to the date of appiication, the registrar may, ongoori cause shown and on payment of the fee prescribed, permit amendment of the appiica-tion by the substitution of the name of rhe bociy corporate as appiicant for registrationnotwithstanding that such body corporate was not in existence at the date of the appiication.

57. Dufy of registrar in exercising discretionary power.-Whene'rer any discrerionarypower is by this Act given to the registrar, he shall not exercise that power adversely to anapplicant without giving that applicant an opportunity of being heard personally or byhis agent.

Jt

Sr,c.TUTEs oF THE REpunuc or Sours Arnrcr - Pa.rexts, DrstcNS AND Copvnlcnrss. 58-63 Trade tr'Iarks in South'W'est Africa Act, l,[o. 48 of 1973 ss. 58-63

58. Taration of costs awarded by registrar.-Any costs arvarded by the registrarshall be taxed by a taxing officer of the court, and payment thereof may be enforced in thesame manner as if they rvere costs allowed by a judge of the court.

PART XIV

EvroexcE

59. Register to be prima facie evidence.-Any register kept under this Act shall beprima facie evidence of an,v matters directed or authorized by this Act to be inserted in thatregister.

60. Certificates of registrer to be prima facie evidence.-(1) A cenificate purponingto be under ihe hand of the registrar as to any entry, matter or thing wirich he ls authorizedby this Act to make or do, shail be prima facie evicience of the entry having been made anciof the contents thereof and of the matter or thing having been done or leit uncione.

(2) Printed or written copies or extracts purporting to be copies of or extracts fromany register or bock or document reiating to trade marks and kept in fie trade marKsofffrce and certified by the registrar and seaied with the sesi of rhat office. shail be acimitteiin evidence in all courts and proceedings without iurther proof or produclion of the orig:nais.

61. Regisfiation to be prima facie evidence of validitv.-In all legai proceeiings relatingto a registereci trade mark (including appiications under section -:3 of ;his Aclj the fact thata person is registered as proprietor of the tracie mark shall be prima facie e'ricience of ihevaliciiry of rhe original registration of the tracie mark anC of ail subsequert assignmenm ancitransmissions thereof.

62. Certificetion of velidity.-In any legal proceeciings in whicn the validit;,' of iheregistration of a registered trade mark is in issue anci is decided in favour of fie proprietorof the trade mark, the court may certify to that efrect. and if lt so certifies. then in any sub-sequenr legai proceedings in which the valiciity of the registration of ihat tracie nark is inissue, the proprietor of the trade mark, on obtaining a frnai orcier or jucigment in his favour.shall be entirled to iris fuil costs, charges and expenses as betrveen attorne'r end ciient, uniessin the subsequent proceedings the court certifres otherwise.

PART XY

Appren To AND Porvrns oF TI{E Comr

6-1. Appeai ageinst decisions of the registrar to the court and powers of the ccurt.-(1) In adciirion to any right of appeai speciflcaily conferred in respect of proceedings uncierthis Act, any party to any proceedings before the registrar, other than proceeciings unciersection 28, may appeai to the court against any decision or order pursuant io such pro-ceeiings.

(2) Subject to the provisions of subsection (5), an appeai ageinst the ciecision of ihecourt in any apoeal to it under this Act shail lie to the appeiiate ciivision of the SupremeCourt.

(3) In addition to any orher powers conferred upon it by this Act, the court na-v inreiation to such apped-

(ai confirm, vary or reverse the orCer or decision appealed against, as justice

may require;

(b) if the record does not furnish sufficient evidence or information for the deter-mination of the appeal, remit the matter to the registrar with instructions in

. . regard to the taking of further evidence or the setting out of further informa-t ion;

(Issue No. 7)

L .\.,.u

Srerurrs oF THE Rrpuslrc or Sourn Arzuce - PITENTS, DESTcNS AND Copynrcnrss. 63-68 Trade Marks in South lV'est Africa Act, No. 48 of 1973 ss. 63-68

(c) order the parties or eitler of them to produce at some convenient time inthe court of appeai such further proof as shall to it seem necessary or desirable;or

(d) take any other course which may lead to the just, speedy and, as far as maybe possible, inexpensive settlement of the case; and

(e) make such order as to costs as justice may require.

@) (a) Every appeal to the court shail be noted and prosecuted in the manner pre-scribed by law for appeais to it against a civii order or decision of a single judge of the court,save that the period within which such appeai shall be noted shail be three months after thedate of the order or decision and that the appeal shall be prosecuted rvithin six weeks ofthe date upon which it was noted: Provideci that the court may, on appiication and on goodcause shown, ailow such extension of t ime for noting or prosecuting the appeal as maybe necessary.

(6) Every appeai to the appeilate division of the Supreme Court shail be note<i andprosecuted in the manner prescribed by iaw for apoeals to such division in civii proceedingssave that no special leave to appeal to such division shall be necessarr.

(5) The parties to croceedings before the registrar shall be cieemed to be panies tocivil proceedings for the purposes of section 20 (-?) of the Suoreme Court Act, 1959 (ActNo. 59 of 1959), and the appellate division of the Supreme Court shali have junsdiction tohear and determine an appeal against an orcier or cieclsion of the registrar wirhout anyintermediate appeal first having been hearci and cietermineci by the court, if the said partiesiodge with the registrar notice in writing of iheir consent thereto on the form prescribedand pay the prescribed fee.

64. Power to order producfion of certificete of regisrarion.-in addition ro any otherpowers conferred upon it bv this Act, the ccurt may in ieiarion io anyi aoolicarion or apoealunder this Act order any party to deiiver io ihe courr or ro the resisrrar the certiicate ofregistration of any trade mark.

65. l{otice to registrer of applicetion to court.-Belbre eny appiication is made to thecourt for an order invoiving the performance of any act by rhe registrar or affecting anyentry in the register, the applicant shail in ihe nanner prescibeci give the registrar at ieastfourteen ciays' notice before the hearing oi such application: Proviied that the registrarD&y, in his discretion, waive such notice or acceDt such shorter norice as he nay in the cir-cumstances deem suffi.cient-

66. Registrar's appearance in proceedings invoiving rec'ficetion of register.{l) Inany legai proceedings in which the relief sought includes eiteration or rectificarion of theregister, the registrar shail have the right to appeer and be hearci. and shail appear if sodirected by the court.

(2) Unless otherwise directed by ;he ccuri. the registrar, in lieu of aopearing andbeing heard, may submit to the court a staten:lent in writing signed by him, giving particuiarsof rhe proceedings before him in relation io ihe natter in issue or of the grounds of anyciecision given by him afr'ecting such matter or of the practice of the trade marks officein like cases or of such other matters reie'ranr to the issues anci within his hrowiecige asregistrar, as he thinks fit, and the statement shail be deemed ro iorm part of the evidenie inthe proceedings.

67. Court's power to review registrar's decision.-The court, in deaiing with anyquestion of the rectification of the register (including all applications under the provisioniof section 33), shall have power to review any decision of the registrar reiating to the enrryin question or the correction sought to be made.

68. Discretion of court in appeals.-In any appeel against a decision of the registrarto the court under this Act, the court shall have power to exercise the same discretionarypowers as under this Act are conferred upon the resistrar.

oSrenrres oF THE Rrpr,guc or Sourg Arnrce - P.,{,TExts, DrsrcNS AND Copymcst

ss. 69-72 Trade Marks in South West Africa Act, I{o. 48 of 19i3 ss. 69-72

69. Procedure in cases of option to apply to court or registrar.-Where under any pro-vision of this Act an appiicant has an option to make an application either to the court orto the registrar-

(a) if proceedlngs concerning the trade mark in question are pending before thecourt, the application must be made to the court;

(b) if in any other case the appiication is macie to the registrar, he may at anystage of the proceeCings rel'er the appiication to the court. or he may afterhearing the parties determine the question between them subject to an appeaito the court.

PART X!'I

OErrxcns

74. Penalty for making laise enfries in registers. or 6rkiag, producing or tenderingfalse copy.-Any person who-

(a) makes or causes to be made e lalse entq/ in any iegister kept under this Acr; or

(r) makes or causes io De made e writing ialseiy purporting to be a copy oi anentry in any such register: or

(r) produces or ienders or causes io be orociuceci or tenciereci as evidence anysuch entry or copy thereof knowing rhe same io be faise,

shall be guiity of an ofr'ence anci liabie on conviction to a i.ne not exceeciing two huncireirand or to imprlsonment tor 3 peiod not rxceeiing iweive rronths or to both such fineand such imprisonment.

it. Penaity for making false statements ibr the purpose of deceiving or influencingregistrar or other officer.-Any person who-

(a) for the purpose of deceiving the iegisrrar or any officer in the execution of theprovisions of this Act: or

(r) for the purpose of procurin-q cr influencing the <ioing or omission of anythingin reiation to this Act or anl/ natter thereuncier,

makes a faise statennent or reDresentation keowing the same to be lalse, shail be guilty ofan offence and liabie on conviction to a fine not exceeiing two huncireC rand or to imprison-ment for a oeicci not e.-,ceeiine tweive months or:o coth such fine anci sucn imorisonment.

1nl 2 t

makes aPenalty for faiseiy representing a trade mark es registered.-i1) Any person who

representation-(a) with respect to a inark not being a iegistereci tracie :nark, to the effect that

it is a registereci liacie srark: or(b) with respect to a part of a registereC :racie ::rark not being e part separareiy

registered as a tracie ararj<. to ihe efrect ihat jt is so legistereC: cr(c) to ihe effect ihat a registereC iracie mark is legisterei in respect of any goocis

or serzices in resoect of wirich lt is nor iegistered: or

fti\ to the etTect that the registration of e rracie mark gives an exciusive right tothe use thereof in any circumsrances in wirich, having regard to limitationsentered in the register, the registration cioes not give ihat iignt,

guiity of an offence and liable on conviction to a fine aot exceeciing one hundrecishall berand.

(2) For the purposes of this section, the use in the territory in relation to a traciemark of the word "registered" or of any abbre.riation thereof or of any other word or letterwhich might reasonably be construed as referring to registration, shail be deemed to importa reference to registration in the register excepr-

oSrerurES oF THE Rlpt,tuc oE Sourg A-nnlc.c. - Perrvrs, Drstcxs AND Copyrucgr

ss.72-76 Trade Marks in South West Africa Act, I,{o,. 48 of 1973 ss.72-76

(a) where that word, abbreviation or letter is used in physical association withother words delineated in characters at least as iarge as those in which thatword, abbreviation or letter is delineated and indicating that the reference is toregistration as a trade mark under the law of a country outside the territorybeing a country under the law of which the registration referred. to is in factin force;

(b) where that word (being a word other than the word. "registered"), abbrevia-tion or letter is of itself such as to indicate that the reference is to such reeis-trarion as is ref-erred to in paragraph (a); or

(c) where that word, abbreviation or letter is used in relation to a mark registeredas a trade mark uncier the law of a country outside the territory an6 in ielationto goods to be exported to that countrv.

PART XVII

IfiscrrleNEous

73. Trade mark not to be deemed to be deceptive or confusing in certain cases.-The use of a registered trade mark in reiarion to goodi between wirichlnd the person usingthe trade mark a form of ccnnection in the ccurse of trade subsists, shail not be deemed tobe iikely to deceive or cause confusion on ihe *wound oniy thar the trade mark has been oris useC in reiadon to goods between which and that Derson or a pred.ecessor in titie oi thatperson a different fbrn of connection in the course ol rrade subsiited or subsists.

74. Use of trade mark for ex^nort rade.-{l) The application of a trade mark in theterritory to goocis-to be exported from the territory, and iny otler act d.one in the teritoryin relation to goo<is

1o be so exporteci rvhich. if done in reiation to goods to be soici or other-wise traded in within the territory, wouid. constirute use of u tra,i. marj< therein, shall bedeemed to constitute use of the tiade mark in reiation to those goods for any ouroose forwhich such use is materiai uncier this Act or at common law.

(2) Subsection (i) shall be deemeci to have had efrect in reiation to an act <ione beforethe date of the commencement of this Act as it has etTect in relation to an act done afterthat date, but shail not affect a determination of a court which was made before that dateor the determinadon of an apoeai against a cietermination so made.

75- Palment of prescribed fees io be made before rcts done or doc:,ments issued.-Whenever under this Act anv prescdbeC t-ee is payabie in respect of any application. resis-tration, matter or ciocument, the registrar may iefuse to penbrrn the act or to receive or toissue the document (as the case nay be) untii the fee payabie in respect thereof is paid.

76. Address. for service.{1) With '3very appiication or notice of opposition underthis Act, the appiicant or objector, as rhe *t. roiy be, shall furnish an ad.biess (not beinga post box number) acceptabie to the registrar as an adciress for service which shail, for allthe purposes of the appiication or the notice of opposition, be deemed to be the address ofthe appiicant or of the objector (as the case may be), and all documents in relation to theapplication or notice of lpposition may be served by leaving them at or sending them tothe address for service of the appiicant or of the objettor, urlh. case may be.

(2) Aly acidress for service may with the approval of the registrar be changed bynotice to the registrar on the form prescibeci

K , , ;!.ii-.j

fl)

(Issue No. 7) O J J

Sranires oF THE Rrpunrrc op Souur Arruce - Parevrs, Destcxs AND Copvnlcsrss. 76-&4 Trade Marks in South West Africa Act, I{o. 48 of 1973 ss. 76-84

(3) The address for service furnished by an applicant in terms of this section shallbe deemed to be the domicilium citandi et executandi of such applicant for the purposes ofany proceedings relating to any entry made in the register in pursuance of the application.

77. Circulation of periods of time.-Where any period of time is specified by this Actas running from the doing of any act, it shall be reckoned as commencing on ttre day nextfollowing the doing of that act.

78. Persons under disabilify.-If any person is, by reason of minority, iunacy or otherdisabiiity, incapable of making any deciaration or doing any act required or permitted bythis Act, then the guardian, curator or other legal representative (if any) of such person orif there be none, any person appointed by the court upon petition on behaif of the personuncier disabiiity or on behaif of any other person interested in the making of such declara-ration or the doing of such act, mav make the declaration or a declaration as nearly corres-ponding thereto as circumstances permit, and do the act in the name and on behalf of theperson under disability, and all acts done by such substitute shall, for the purposes of thisAct. be as effectual as if done by the person for whom he is substituted.

79. Fees, regulations, forms and classification of goods.-(l) The Minister in consulta-tion with the Minister of Finance may prescribe a tariff, not inconsistent with this Act, ofthe fees which shail be payable to the registrar in respect of any application, registration.matter or document, and the fees shall be payable as so prescribed.

(2) The lvlinister may make regulations, not inconsistent with this Act, as to ailmatters, inciuciing forms and a schedule of ciassification of goods or services, which by thisAct are required or permitted to be prescnbed by regulation or which are necessary or con-venient for giving effect to ihe provisions of this Act or for the conduct of any business relat-ing to the trade marks oilce established by this Act.

80. Transitional provisions.-(1) Subject to the provisions of sections 3 and 81 thevalidity oi any entry reiating to a trade mark on the register of trade marls existing at theccmmencement of this Act shall be determined in accordance with the laws in force at thedate of such entry

81. Rehospective efect of certain provisions.-sections 48 and .19, and those provisionsof this Act which relate to registered users and assignments, shail be deemed to have comeinto operation on i January 1948.

82. Application in Eastern Caprivi Zipfei.-This Act and any amendment thereof shallapply also in the Eastern Caprivi Zipfel.

83. Repeal and amendment of laws.-{l) Sections 10 to 13 inciusive of the Patents,Designs and Trade Marks Proclamation. 1923, of the territory, and so much of the remainderof that Prociamation as relates to trade marks, are hereby repealed.

(2) The said Prociamation is hereby amended-(a) by the substitution in section 24 for the words "Designs and Trade Marks"

of the words "and Designs"; and(b) by the delerion in the preambie of the words "and Trade Marks".

84. Short title and commencement.-This Act shall be cailed the Trade Marks in SouthWest Africa Act, 1973. and shail come into operation on 1 January 1974.

(Issue No. 7)