Part 5 Trademark Licensing

Section 68 The owner of a registered trademark may license another person to use the trademark for all or some of the goods for which the trademark is registered.

Trademark license agreements under the first paragraph shall be in writing and registered with the Registrar.

Applications to register a license agreement under paragraph two shall comply with the rules and procedures prescribed in the Ministerial Regulations and shall show at least the following particulars:

     (1) conditions or terms between the trademark owner and licensee to insure effective control by the registered owner of the trademark over the quality of the goods of the licensee;

     (2) the goods for which the trademark is to be used.

Section 69 In the case where the Registrar finds that Section 68 would not cause the public to be confused or misled and is not contrary to public order or morality or to public policy, the Registrar shall order registration of the agreement and for such purposes may impose conditions or restrictions. But if the Registrar finds that the license agreement will confuse or mislead the public or is contrary to public order or morality or to public policy, the Registrar shall refuse to register the license.

Orders of the Registrar under the first paragraph shall be promptly notified in writing to the owner of the trademark and persons who have applied to be registered as licensees. In the case where the Registrar has imposed conditions or restrictions or has refused registration, the said persons shall also be informed of the reasons such refuse.

The trademark owner or licensee applicant may appeal the order of the Registrar under the first paragraph to the Board within ninety days from the date of receipt of the notification. If no appeal is filed within the prescribed period, the order shall be deemed final.

Decisions of the Board under paragraph three shall be final.

Section 70 The use of the trademark on goods by the licensee in his business shall be deemed as the use by the trademark owner.

Section 71 The trademark owner together with the licensee may apply to the Registrar to amend the registration of a trademark license agreement in respect of the goods covered by the license or other conditions and restrictions included by the owner and Section 69 shall apply mutatis mutandis.

The application to amend the registration of a license agreement under the first paragraph shall comply with the rules and procedures prescribed in the Ministerial Regulations.

Section 72 The trademark owner together with the licensee may apply to the Registrar to cancel the registration of a license agreement.

Either the trademark owner or the licensee may apply to the Registrar to cancel the registration of a license agreement if it can be proved to have expired.

Any interested person or the Registrar may petition the Board to cancel the registration of a trademark license agreement if it is shown that:-

     (1) the use of the trademark by the licensee has confused or misled the public or is contrary to public order or morality or to public policy, or

     (2) the trademark owner can no longer exercise effective control over the quality of the goods under the license.

Cancellation of trademark licenses under this Section shall comply with the rules and procedures prescribed in the Ministerial Regulations.

Section 73 After the receipt of an application under Section 72 paragraph two or three, the Registrar or Board, as the case may be, in writing shall notify the trademark owner or licensee, as the case may be, to submit a reply within a prescribed period of not less than fifteen nor more than sixty days from the date of receipt of the notification.

In considering applications under Section 71 and 72, the Registrar or Board, as the case may be, may require any person concerned to submit evidence or additional information.

Section 74⁽¹⁾ When an order is made under Section 72 paragraph two by the Registrar, the order together with the grounds thereof shall be promptly notified in writing to the trademark owner and licensees. The order shall take effect from the date of receipt of the notification.

The trademark owner and licensee may appeal the order of the Registrar under the first paragraph to the Board within ninety days from the receipt of the notification. If no appeal is submitted within the prescribed period, the order of the Registrar shall be deemed final.

Decisions of the Board under paragraph two shall be final.

Section 75 Orders of the Board under Section 72 paragraph three, together with grounds thereof shall be promptly notified in writing to the trademark owner, licensees, petitioning interested person and Registrar. Such orders shall take effect from the date of receipt of the notification.

The interested person or the Registrar may appeal the order to the Board to the court within ninety days from the date of receipt of the notification. If no appeal is submitted within the prescribed period, the order of the Board shall be deemed final.

Section 76 If a trademark registration is cancelled, the licensing of such a trademark shall also cease to have effect.

Section 77 If not otherwise provided in the license agreement, the trademark owner shall have the right to use the trademark himself and to license persons other than such licensee to use the mark.

Section 78 If not otherwise provided in the license agreement, the licensee shall have the right to use the trademark throughout the country for all the goods for which the trademark is registered and for the entire term of the trademark registration and its renewals.

Section 79 If not otherwise provided in the license agreement, the licensee may not transfer the license to third persons nor sublicense others to use the trademark.

CHAPTER II SERVICE AND CERTIFICATION MARKS

Section 80 The provision concerning trademarks shall apply to service marks mutatis mutandis and the word "goods" in those provisions shall mean "services"

Section 81 Except as otherwise provided in this Chapter, the provisions concerning trademarks shall apply to certification marks mutatis mutandis.

Section 82 The applicant for registration of a certification mark, in addition to complying with the provisions on registration of trademarks, shall:-

     (1) submit the regulations on use of the certification mark together with the application for registration and

     (2) demonstrate an ability to certify the characteristics of the goods or services as provided in the regulations under (1).

The regulations under (1) shall indicate the origin, composition, method of production, quality or other characteristics which are to be certified including the rule, procedures and conditions for authorizing use of the certification mark.

Section 83 The Registrar may require the applicant for registration of a certification mark to amend the regulations on use of the certification mark as he may think fit within sixty days of the date of receipt of the order and shall in writing promptly notify the applicant of the order with the grounds therefor. Section 18 and 19 shall apply to appeals against orders of the Registrar mutatis mutandis.

Section 84 If the Registrar is of the opinion that the applicant for registration of a certification mark does not have sufficient ability to certify the characteristics of the goods or services as provided in the regulations on use of the certification mark or that registration of the certification mark would not be in the public interest, the Registrar shall refuse registration and shall in writing promptly notify the applicant of the order with the grounds of the refuse. Sections 18 and 19 shall apply to appeals against orders of the Registrar mutatis mutandis.

Section 85 In the publication of an application for registration of a certification mark, the Registrar shall indicate the essential elements of the regulations on use of the certification mark.

Section 86 The owner of a registered certification mark may apply to amend the regulations on use of the certification mark provided the public interest is not thereby affected.

Amendments under the first paragraph shall comply with the rules and procedures prescribed in the Ministerial Regulations.

Section 87 If the Registrar is that an amendment of the regulations under Section 86 are acceptable, the Registrar shall order the registration and the publication of the essential elements of the regulations as amended.

The Registrar shall in writing notify the owner of the certification mark of the order to advertise the amendment under the first paragraph without delay.

Section 88 If the Registrar is of the opinion that the regulations as amended under Section 86 are not acceptable, the Registrar shall refuse registration and in writing promptly notify the owner of the certification mark giving the grounds therefor,.

Section 89 The owner of the certification mark or any person who has been or will be prejudiced by an order of the Registrar under Section 87 or 88 may appeal the order to the Board within ninety days from the date of publication under Section 87 or from the date of receipt of the Registrar's order under Section 88, as the case may be.

The decision of the Board under the first paragraph shall be final.

Section 90 The owner of a registered certification mark may not use the mark on his own goods or services and may not license other persons to act as certifier by authorizing the use of the certification mark.

Section 91 The authorization of others to use a certification mark for goods or services shall be in writing and signed by the owner of the certification mark.

Section 92 The right to a registered certification mark may be transferred when:-

     (1) the transferred has been approved by the Registrar on a showing by the transferee that he has sufficient ability to certify the characteristics of the goods or services as indicated in the regulations on use of the certification mark,

     (2) the transfer is in writing, and

     (3) is registered by the Registrar.

In cases where the Registrar does not give approval or refuses to register the transfer, Section 84 shall apply mutatis mutandis.

Applications for approval to transfer rights and for registration of the transfer under the first paragraph shall comply with the rules and procedures prescribed in the Ministerial Regulations.

Section 93 The right to certification mark shall terminate when the owner dies or loses its status of a juristic person.

CHAPTER III COLLECTIVE MARKS

Section 94 Except for the provisions of Chapter I, Part 5, the provisions concerning trademarks shall apply to collective marks mutatis mutandis.

Part 6