Trade Marks Regulations

Gazette No. 43 dated 26th day of May, 2017. ARRANGEMENT OF REGULATIONS PART 1 - INTRODUCTORY

Amendment of regulations of collective and certification marks; Schedule 1 and Schedule 2 of the Law PART 9 - THE REGISTER

Publication fee Schedule 1 - Fees Schedule 2 - Index and Forms Schedule 3 - Cost in proceedings before the Registrar Schedule 4 - Alteration of time limits In exercise of the powers conferred by section 70 of the Trade Marks Law, 2016 (Law 31 of 2016), the Cabinet makes the following Regulations - PART 1 - INTRODUCTORY (1) These Regulations may be cited as the Trade Marks Regulations, 2017. (2) These Regulations shall come into force immediately after the coming into force of the Trade Marks Law, 2016. (1) In these regulations - “agent” means a registered agent; “Gazette” means the Cayman Islands Gazette (Intellectual Property) published from time to time; “Nice Agreement” means the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration Marks of 15th June 1957 as amendment from time to time; “Nice Classification” means the system of classification under the Nice Agreement as varies from time to time; “specification” means the designation of goods or services in respect of which a trade mark is registered or proposed to be registered; and “statement of truth” means a statement that the person producing the document that includes the statement believes the matters stated as facts in the document to be true. Citation Definitions (2) In these regulations, a reference to the filing of an application, notice or other document, unless the contrary intention appears, is to be construed as a reference to it being delivered to the Registrar. Fees shall be the fees set out in Schedule 1 and shall accompany the relevant form. Any forms referred to in these regulations and set out in Schedule 2 may be modified in such a manner as the Registrar may direct to meet such cases as may be specified. (1) An application, notice or other document authorised or required by the Law to be sent to the Registrar may be sent by post or courier. (2) It is sufficient proof of delivery to show that the application, notice or other document was properly addressed and sent by post or courier. (1) The Registrar may permit, as an alternative to sending by post or courier, the filing of the application, notice or other document by electronic means subject to such conditions as the Registrar may specify by way of - (a) notice published in the Gazette; or (b) written notice to a specific person who wishes to file an application, notice or other document by electronic means. (2) The Registrar may permit, as an alternative to sending by post or delivery of the application, notice, or other document in legible form the filing of the application, notice or other document by electronic means subject to such terms and conditions as the Registrar may specify, either by notice published in the Gazette or, in a particular case, by written notice to the person desiring to file any such documents by such means. (3) Where regulation (2) applies, delivery of the application, notice, or other document in legible form may be satisfied by delivery of it in the form of an electronic record subject to section 8 of the Electronic Transactions Law (2003 Revision). (4) The Registrar may deliver a document to a person in the form of an electronic record subject to section 8 of the Electronic Transactions Law (2003 Revision). (5) Where an electronic record is transmitted by electronic means, the time at which it is sent and received shall be in accordance with section 17 of the Electronic Transactions Law (2003 Revision). Fees Schedule 1 Forms and directions of the Registrar Schedule 2 Delivery of documents by post and courier Delivery of documents by electronic means (2003 Revision) (6) In this regulation, “electronic” and “electronic record” have the same meaning as in section 2 of the Electronic Transactions Law (2003 Revision). (1) The Registrar shall extend any time limit in these regulations where the Registrar is satisfied that the failure to act in accordance with the Law was wholly or mainly attributed to a delay in, or failure of, a communication service. (2) Any extension under paragraph (1) shall be - (a) made after giving the parties such notice; and (b) subject to such conditions, as the Registrar may direct. (3) For the purpose of this regulation, “communication service” means a service by which documents may be sent and delivered and includes post, facsimile, email and courier. Where any person is bound to furnish the Registrar with an address, such address shall be sufficient in all respects to enable the delivery of any document to that person. For the purposes of any proceedings, the address for service shall be the address of the agent appointed under section 60(1) of the Law. 10. (1) Except as otherwise required by these Regulations, any application, request or notice which is required or permitted by the Law or these Regulations to be made or given to the Registrar and all other communications between an applicant or a person making such a request or giving such a notice and the Registrar or any other person, shall be signed, made or given by an agent authorised under section 60(1) of the Law. (2) Where a person appoints an agent for the first time or appoints one agent in substitution for another, such appointed agent shall file the relevant form in Schedule 2 on the condition that, in the case of a substitution of one agent for another, the newly appointed agent shall also notify the previously appointed agent of the appointment. (3) In the event of an appointment under paragraph (2), service upon the agent of any document relating to the matter shall be deemed to be service upon the principal, and all communications directed to be made to the principal in respect of the matter may be addressed to the registered agent, and all attendance before the Registrar relating thereto may be made through such agent. Delay in communication service Address Address for service Registered agents (4) A request to be licensed by the Registrar as a registered agent shall be filed on the relevant form in Schedule 2 and accompanied by the relevant fee set out in Schedule 1. (5) In respect of any transaction, the Registrar may refuse to recognise as agent - (a) an individual whose name has been erased from and not restored to, or who is suspended from, the Register of trade mark agents on the ground of misconduct; (b) a person who is found by the Grand Court to have been guilty of such conduct as would, in the case of an individual registered in that Register, render that person liable to have their name erased from it on the ground of misconduct; or (c) a partnership or body corporate of which one of the partners or directors is a person whom the Registrar could refuse to recognise under paragraph (a) or (b). (6) A registered agent shall pay the annual fee as set out in Schedule 1. (7) If the annual fee and penalty are not paid by 31st December the Registrar may remove the name of the registered agent from the register of agents. (8) A registered agent who defaults in paying the annual fee shall incur a penalty of - (a) 33.33 per cent of the annual fee specified in Schedule1 if the fee and penalty are paid between 1stApril and 30th June; (b) 66.67 per cent of the annual fee specified in Schedule 1 if the fee and penalty are paid between 1st July and the 30th September; and (c) 100 per cent of the annual fee specified in Schedule 1 if the fee and penalty are paid between the 1st October and the 31st December. 11. (1) An application to be removed as the registered agent of a proprietor shall be made on the form set out in Schedule 2 and accompanied by the fee. (2) The Registrar shall inform the respective proprietor of any application for removal as registered agent. (3) Where a trade mark is scheduled to be removed from the Register for failure of the proprietor to appoint an agent, the Registrar shall cause this fact to be published by way of the Gazette. Removal of registered agent PART 2 - REGISTRABLE TRADE MARKS 12. (1) The Registrar may refuse to accept an application for the registration of a trade mark upon which any of the following appear - (a) the words "patent", "registered", "registered design", "copyright", "To counterfeit this is a forgery", or words to like effect; (b) representations of Her Majesty or any member of the Royal Family, or any colourable imitations thereof; the words "Red Cross" or "Geneva Cross", and representations of the Geneva and other crosses in red, or of the Swiss Federal Cross in white on a red ground or silver on a red ground, or such representations in a similar colour or colours; or (d) the words "Red Crescent" or "Red Lion and Sun" and representations of the red crescent moon, or red lion and sun, on a white or silver ground. (2) Where there appears in a trade mark the registration of which is applied for a representation of a cross or crescent moon in any colour, not being one of those referred to in paragraphs (1)(c) or (d), the Registrar may require the applicant as a condition of acceptance to undertake not to use the cross or crescent moon device in red, or (in the case of the cross device only) in white on a red ground, or in any similar colour or colours. 13. The following features shall not appear on a trade mark for which an application for registration is made, unless it appears to the Registrar that consent has been given by or on behalf of the respective Government or international organisation - (a) representations of the Royal or Imperial Arms, or the Arms of the Cayman Islands, crests, armorial bearings or insignia, the Coat of Arms of any state or other division of any country or territory of any country or devices so nearly resembling any of the foregoing as to be likely to be mistaken for them; (b) representations of the Royal or Imperial Crowns, insignia of Royalty and International Organisations, or the Royal, Imperial or National flags or of the flag of the Cayman Islands or of any flag of any state or other division of any country or territory of any country; any words, such as "Royal" or "Imperial", or any letters or devices if used in such a manner as to be likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation, whether or not such be the case. Unacceptable applications Prohibited material 14. Where the name or representation of any person appears on a trade mark, the Registrar shall before proceeding to register the mark, be furnished with consent from the person or, in the case of a person deceased, from the legal representative, and in default of such consent the Registrar shall refuse to register the mark. PART 3 - PROCEDURE ON APPLICATION FOR REGISTRATION 15. (1) The prescribed system of classification for the purposes of the registration of trade marks is the Nice Classification. (2) When a trade mark is registered it shall be classified according to the version of the Nice Classification that was in effect on the date of the application for registration. 16. (1) An application to the Registrar for the registration of a trade mark shall be filed on the relevant form in Schedule 2 signed by the applicant or the (2) An application for registration shall be for the registration of the trade mark in respect of goods or services in one or more classes in accordance with the Nice Classification and shall specify - (a) the class or classes of goods or services to which the application relates; and (b) a clear description, appropriate to the respective class, of the goods or services in respect of which the trade mark is proposed to be registered. (3) If the application relates to more than one class in the Nice Classification, the specification contained in it shall set out the classes in consecutive numerical order and the specification of the goods or services shall be grouped accordingly. (4) If the specification contained within the application lists the goods or services item by reference to a class in the Nice Classification in which it does not fall, the applicant may request, by filing the relevant form in Schedule 2 that the application be amended to include the appropriate class for the item, and upon the payment of the appropriate class fee the Registrar shall amend the application accordingly. (5) In the case of an application for registration in respect of all the goods or services included in a class, or of a large variety of goods or services, the Representation of actual Classification of goods and services Registrar may refuse to accept the application unless the Registrar is satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make if and when it is registered. (6) On receipt of the application the Registrar shall furnish the applicant with an acknowledgment therefor. 17. (1) The representation included with an application for registration of a trade mark shall depict the trade mark clearly and in sufficient detail to permit a proper examination to be made of the trade mark and shall be of a kind and quality that is suitable for reproduction and registration. (2) The Registrar, if dissatisfied with any representation of a mark, may at any time require another representation satisfactory to the Registrar to be substituted before proceeding with the application. 18. (1) The Registrar may require, where a drawing or other representation or specimen cannot be given in the manner referred to in regulation 17, a specimen copy of the trade mark to be sent either of full size or on a reduced scale, and in such form as the Registrar may think most convenient. (2) The Registrar may in exceptional cases, deposit in the Registry a specimen or copy of a trade mark which cannot conveniently be shown by a representation, and may refer to this specimen or copy in the Register in such manner as the Registrar may think fit. 19. (l) Where a trade mark contains a word or words in characters other than the characters in the Roman alphabet, there shall, unless the Registrar otherwise directs, be endorsed on the application form, a sufficient transliteration and translation, to the satisfaction of the Registrar, of each of such words, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or the agent. (2) Where a trade mark contains a word or words in a language other than English, the Registrar may ask for an accurate translation thereof together with the name of the language, and the translation shall be endorsed and signed by the PART 4 - PROCEDURE ON RECEIPT OF APPLICATION 20. (1) Upon receipt of an application for the registration of a trade mark in respect of any goods or services, the Registrar shall cause a search to be made of Representation of mark; section 13(2)(f) Specimens of trade marks in exceptional cases Transliteration and translation Search the registered marks and pending applications, for the purpose of ascertaining whether there are on record, in respect of the same goods or services or description of goods or services, any marks identical with the mark applied for, or so nearly resembling it so as to render the mark applied for likely to deceive or cause confusion. (2) Where, following any search under paragraph (1) it appears to the Registrar that there may be relative grounds for refusal of the registration under section 25 of the Law, the Registrar shall notify this fact to - (a) the applicant’s agent; and (b) the agent of the proprietor of the earlier right. 21. After consideration of the application, and of any evidence of use or of distinctiveness or of any other matter which the applicant may furnish or be required to furnish, the Registrar may accept the application absolutely, object to it, or may accept it subject to such conditions, amendments, disclaimer, modifications or limitations as the Registrar may determine in accordance with section 33 of the Law. 22. If the Registrar objects to the application, the Registrar shall inform the applicant of the objections in writing, and unless the applicant applies for a hearing or makes a reply in writing to those objections within sixty days of being notified, the applicant shall be deemed to have withdrawn the application. 23. (1) If the Registrar is willing to accept the application subject to any conditions, amendments, disclaimer, modifications or limitations, the Registrar shall communicate this to the applicant in writing, and, if the applicant objects to such conditions, amendments, disclaimer, modifications or limitations, the applicant shall within sixty days of the date of the communication apply for a hearing or communicate considered objections in writing, and if the applicant does not do so the applicant shall be deemed to have withdrawn the application. (2) If the applicant does not object to such conditions, amendments, disclaimer, modifications or limitations referred to in paragraph (1), the applicant shall within sixty days of the date of the communication, notify the Registrar in writing, and alter the application accordingly. (3) Where an application for the registration of a trade mark is altered under paragraph (1), the publication fee under regulation 96 shall be payable by the applicant. 24. (1) The decision of the Registrar - (a) pursuant to the hearing under regulation 22 or 23; or Acceptance: absolute or conditional Registrar’s objections Registrar’s conditions Decision of the Registrar (b) where the applicant has communicated the considered objections or reply in writing in accordance with regulation 23(1), and the reply has stated that there is no desire to be heard, shall be communicated to the applicant in writing. (2) The date on which the Registrar’s decision is sent to the applicant shall be deemed to be the date of the Registrar’s decision for the purpose of an appeal. 25. The Registrar may, where the trade mark contains words or devices that are descriptive of the goods or services applied for, direct the applicant to insert in an application such disclaimer as the Registrar may think fit, to make it clear - (a) that the applicant does not claim an exclusive right to the descriptive word or device; and (b) the extent of the applicant’s rights in relation to the descriptive word or device, if the mark is registered. 26. Notice of non-completion of an application to register a trade mark shall be given by the Registrar, pursuant to section 15(6) of the Law, to the applicant’s agent. 27. Where an application for registration is accepted and there is no representation of the trade mark included in the publication of the application, the Registrar shall refer in the Gazette to the place where a specimen or representation of the trade mark is deposited for exhibition. 28. The Registrar shall send to the applicant a copy of any document containing observations made under section 16(4) of the Law within twenty-one days of receipt. PART 5 - OPPOSITION TO REGISTRATION 29. (1) Notice of opposition to the registration of the trade mark under sections 16(2) and (3) to which the publication relates, shall be given on the appropriate form set out in Schedule 2. (2) If registration is opposed on the ground that the mark resembles any mark or marks already on the Register, the numbers of such marks and the numbers of the Gazette in which they have been published shall be set out by the person giving notice. 30. (1) Within sixty days of the date on which the Registrar sends the notice of opposition the applicant shall send to the Registrar a counter-statement on the Disclaimer Notice of noncompletion Applications to be published in the Gazette Observations on application to be sent to applicant Counter-statements appropriate form in Schedule 2 setting out the grounds on which the applicant relies as supporting the application along with any facts alleged in the notice of opposition that are admitted. (2) Where the applicant fails to file a counter-statement within the relevant period, the application for registration, insofar as it relates to the goods and services in respect of which the opposition is directed, shall be deemed to be withdrawn unless the Registrar directs otherwise. 31. Upon receipt of the counter-statement, the Registrar shall immediately send a copy of the counter-statement to the opponent, and within ninety days of the date on which the Registrar sends the copy of the counter-statement the opponent shall submit to the Registrar such evidence by way of witness statement and any accompanying exhibits as the opponent may desire to adduce in support of the opposition, and shall deliver to the applicant a copy of such evidence. 32. (1) If an opponent submits evidence within ninety days of the date on which the opponent sends a copy of the evidence to the applicant, the applicant shall submit to the Registrar such evidence by way of witness statement and any accompanying exhibits as the applicant may desire to adduce in support of the application, and shall deliver to the opponent a copy of such evidence. (2) If an opponent does not submit evidence within the time set out in regulation 31, the Registrar shall notify the applicant of the failure to submit (3) An applicant may, within ninety days of the date on which the Registrar sends notification that the opponent did not file evidence in support of the application, submit to the Registrar evidence by way of witness statement and any accompanying exhibits in support of the application and shall deliver to the opponent a copy of such evidence. 33. (1) Within ninety days of the date on which the applicant sends a copy of the evidence to the opponent, the opponent may file with the Registrar evidence by witness statement and any accompanying exhibits in reply, and shall deliver to the applicant a copy of the evidence. (2) Evidence under paragraph (1) shall be confined to matters strictly in reply. 34. (1) Upon completion of the evidence rounds the Registrar shall give notice to the parties of a date when the arguments in the case will be heard. Copy of counterstatement to be sent to opponent Opponent submitting Reply by opponent (2) Such appointment shall be for a date at least fourteen days after the date of the notice, unless the parties consent to a shorter notice. (3) Within seven days of the date on which the Registrar sends such notice in the appropriate form set out in Schedule 2 both parties shall notify the Registrar as to whether or not they wish to be heard and if neither party wishes to be heard the Registrar shall notify the parties and make a determination from the submissions. (4) If either or both parties wish to be heard the Registrar shall re-confirm 35. (1) The Registrar shall not, under any circumstances, grant an extension of time for the filing of a notice of opposition or a counter-statement. reasons by either party, to grant any reasonable extension of time for opposition proceedings not mentioned in paragraph (1). 36. (1) Upon the joint application of the parties, the Registrar shall at any time after the counter-statement has been submitted, suspend the opposition (2) A joint application under paragraph (1) is contingent on the parties (a) (3) The Registrar will consider further joint applications to suspend the opposition proceedings made upon the expiry of the first granted suspension. 37. In any proceedings the Registrar may, by order, award to any party such Schedule 3, and direct the manner and by whom the costs are to be paid. opposition proceedings Opposition: cost of Schedule 3 38. (1) Where a party giving notice of opposition, or an applicant sending a counter-statement after receipt of a copy of such notice, does not reside nor carry on business in the Islands, the Registrar may require the agent acting for such party to give a written undertaking that the relevant principal will bear the costs of proceedings before the Registrar and at any stage in the opposition proceedings the Registrar may require further security to be given at any time before the decision in the case. (2) The Appeals Tribunal may also require security for the costs of any appeal to the Appeals Tribunal from the Registrar’s decision. (3) Where a party fails to provide security in any proceedings before the Registrar, or in the case of an appeal, in any proceedings before the Tribunal, the Registrar, or the Tribunal, as the case may be, may treat the party in default as having withdrawn their opposition or counter-statement. PART 6 - ENTRY IN REGISTER, RENEWAL AND REGISTRABLE TRANSACTIONS 39. (1) As soon as may be practicable after the expiration of sixty days of the date of the publication in the Gazette of any application for the registration of a trade mark, the Registrar shall, subject to any opposition proceedings and the determination thereof, and in accordance with the provisions of section 18 of the Law enter the trade mark in the Register. (2) The entry in the Register shall give the date of registration, the goods or services in respect of which it is registered, and all particulars specified in section 13(2) of the Law. 40. Upon the registration of a trade mark, the Registrar shall issue to the applicant a certificate of registration. 41. Renewal of registration shall be effected by filing an application for renewal on the relevant form in Schedule 2 at any time within the period of 6 months before the date of the expiration of the registration. 42. (1) The late renewal of a registration shall be effected by filing an application for renewal on the relevant form in Schedule 2 at any time within the period of 6 months beginning on the date of the expiration of the registration. security for costs Entry of trade mark Certificate of Renewal of registration Late renewal of (2) Where a request for renewal is not filed within the time period specified in paragraph (1), the Registrar shall remove the mark from the Register and publish its removal by way of notice in the Gazette. 43. Where the Registrar has removed the mark from the Register in accordance with regulation 42(2) the Registrar may, following receipt of an application filed on the relevant form in Schedule 2 and the respective fee, restore the mark to the Register and renew its registration. 44. (1) Upon the renewal, late renewal, or restoration and renewal, of a registration, a notice to that effect shall be sent to the registered proprietor, and the renewal, late renewal, or restoration and renewal, shall be published in the Gazette. (2) Where any notice of a renewal under paragraph (1) is to be published in the Gazette, the publication fee in regulation 96 shall be payable by the registered proprietor. 45. Upon application made to the Registrar on the relevant form in Schedule 2 by such person as is mentioned in section 39(1)(a) or (b) of the Law there shall be entered in the Register in respect of each trade mark the following particulars of registrable transactions together with the date on which the entry is made - (a) in the case of an assignment of a registered trade mark or any right in it - (i) the name and address of the assignee; (ii) the date of the assignment; and (iii) where the assignment is in respect of any right in the mark, a description of the right assigned; (b) in the case of the grant of a licence under a registered trade mark- (i) the name and address of the licensee; (ii) where the licence is an exclusive licence, that fact; (iii) where the licence is limited, a description of the limitation; and (iv) the duration of the licence if the duration is for a definite period; in the case of the grant of any security interest over a registered trade mark or any right in or under it - (i) the name and address of the grantee; (ii) the nature of the interest (whether fixed or floating); and (iii) the extent of the security and the right in or under the mark secured; (d) in the case of the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it - Restoration of registration; section 20(8)(b) Gazette notice of renewal, late renewal and restoration and renewal Entry in the Register of particulars of registrable transactions (i) the name and address of the person in whom the mark or any right in or under it vests by virtue of the assent; and (ii) the date of the assent; (e) in the case of a court or other competent authority transferring a registered trade mark or any right in or under it - (i) the name and address of the transferee; (ii) the date of the order; and (iii) where the transfer is in respect of a right in the mark, a description of the right transferred; (f) in the case of any registered transmission by way of testamentary disposition or operation of law other than assignment - (i) the name and address of the person and a description of the person claiming to be entitled (if a partnership, the full name of each of the partners); (ii) a copy of the instrument under which the person claims; and (iii) where the transfer is in respect of a right in the mark, a description of the right transferred; and (g) in the case of any amendment of the registered particulars relating to a licence under a registered trade mark or a security interest over a registered trade mark or any right in or under it, particulars to reflect such amendment. 46. (1) Where it appears to the Registrar that any matter in the Register has ceased to have effect, before removing it from the Register - (a) the Registrar may publish in the Gazette the fact that it is intended to remove that matter; and (b) where any person appears to the Registrar to be affected by the removal, notice of the intended removal shall be sent to that (2) Within sixty days of the date on which the intention to remove the matter is published, or notice of the intended removal is sent, as the case may be - (a) any person may file notice of opposition to the removal on the relevant form in Schedule 2; and (b) the person to whom a notice is sent under paragraph (1)(b) may file objections in writing, if any, to the removal. (3) If the Registrar is satisfied, after considering any objections or opposition to the removal, that the matter has not ceased to have effect then the Registrar shall not remove it. (4) Where there has been no response to the Registrar’s notice the Registrar may remove the matter. Removal of matter from (5) Where representations objecting to the removal of the matter have been made, the Registrar may remove it, or the appropriate part of it, if after considering the objections the Registrar is of the view that the matter, or any part of it, has ceased to have effect. PART 7 - SURRENDER, REVOCATION AND INVALIDITY 47. (1) Subject to paragraph (2), the proprietor may surrender a registered trade mark in respect of all the goods or services for which it is registered or in respect only of those goods or services specified by the proprietor by sending notice to the Registrar on the relevant form in Schedule 2. (2) A notice under paragraph (1) shall be of no effect unless the proprietor in that notice - (a) gives the name and address of any person having a registered interest in the mark; and (b) certifies that any such person - (i) has been sent at least three months’ notice of the proprietor’s intention to surrender the mark; or (ii) is not affected or, if affected, consents to the surrender. (3) The Registrar shall, upon receiving the notice under paragraph (1), make the appropriate entry in the Register and publish the date of receipt of the surrender in the Gazette. (4) The surrender takes effect from the date of publication in the Gazette. 48. (1) An application to the Registrar for revocation of a trade mark under section 44 of the Law, on the grounds set out in section 44(1)(a) or (b), shall be made on the relevant form in Schedule 2 and shall include a statement of the grounds on which the application is made and be accompanied by a statement of truth. (2) The Registrar shall send a copy of the form referred to in paragraph (1) and the statement of the grounds on which the application is made to the proprietor. 49. (1) Within sixty days of the date on which the Registrar sends a copy of the form referred to in regulation 48(1) and the statement of the grounds to the proprietor, the proprietor shall send to the Registrar a counter-statement on t h e relevant form in Schedule 2 setting out the grounds on which the proprietor relies. Surrender revocation Revocation: counterstatements (2) If the Registrar does not receive a counter-statement, the Registrar may consider this as an indication that the proprietor is not contesting the application for revocation and the registration of the mark shall, unless the Registrar directs otherwise, be revoked. (3) The Registrar shall send a copy of the counter-statement on t h e relevant form in Schedule 2 to the applicant. 50. Within ninety days of the date on which the Registrar sends the copy of the counter-statement, the applicant shall submit to the Registrar such evidence by way of witness statement and any accompanying exhibits as the applicant may desire to adduce in support of the application for revocation, and shall deliver to the proprietor a copy of such evidence. 51. (1) If the applicant submits evidence in accordance with regulation 50, within ninety days of the date on which the applicant sends a copy of the evidence to the proprietor, the proprietor shall submit to the Registrar such evidence by way of witness statement and any accompanying exhibits as the proprietor may desire, and shall deliver to the applicant a copy of such evidence. (2) If an applicant does not submit evidence within the time-frame prescribed under regulation 50 the applicant, shall, unless the Registrar otherwise directs, be deemed to have withdrawn the application. (3) The Registrar shall notify the proprietor of any direction given under paragraph (2). 52. Within ninety days of the date on which the proprietor sends a copy of the evidence to the applicant, the applicant may file to the Registrar evidence by witness statement and any accompanying exhibits in reply, and shall deliver to the proprietor a copy of the evidence, such evidence being confined to matters strictly in reply. 53. (1) Upon completion of the evidence rounds the Registrar shall give notice to the parties of a date when the arguments in the case are scheduled to be heard. (2) The hearing shall be scheduled for a date at least fourteen days after the date of the notice, unless the parties consent to a shorter notice. (3) Within seven days of the date on which the Registrar sends such notice both parties shall notify the Registrar as to whether or not they wish to be heard. revocation: evidence rounds Proprietor submitting revocation: reply (4) If neither party wishes to be heard the Registrar shall notify the parties of that and proceed to make a decision from the submissions. (5) If either or both parties wish to be heard the Registrar shall re-confirm 54. (1) The Registrar shall under no circumstances grant an extension of time for the filing of a counter-statement. reasons by either party, to grant any reasonable extension of time subject to 55. (1) Upon the joint application of the parties, the Registrar shall at any time after the counter-statement has been submitted, suspend the revocation (2) The joint application shall be requested on the basis that the parties are (a) (3) The Registrar will consider further joint applications to suspend the revocation proceedings made upon the expiry of the first granted suspension. 56. In any proceedings, the Registrar may, by order, award to any party such Schedule 3, and direct how and by what parties they are to be paid. 57. (1) Where a party filing an application for revocation, or a proprietor sending a counter-statement after receipt of a copy of such application, neither resides nor carries on business in the Islands, the Registrar may require the agent acting for and on behalf of such party to give a written guarantee that such party will bear the costs of proceedings before the Registrar and at any stage in the revocation proceedings the Registrar may require further security to be given at any time before the decision in the case. revocation proceedings Revocation: costs of revocation: security for costs (2) The Registrar may also require security for the costs of any appeal to the Court from the Registrar’s decision. (3) In default of such security being given, the Registrar, in the case of the proceedings before the Registrar, or in the case of an Appeal, the Appeals Tribunal under section 58 of the Law may treat the party in default as having withdrawn their application for revocation or counter-statement, as the case may be. 58. (1) An application to the Registrar for a declaration of invalidity of a trade mark under section 45 of the Law shall be made on the relevant form in Schedule 2 and shall include a statement of the grounds on which the application is made and be accompanied by a statement of truth. (2) Where the application is based on a trade mark which has been registered, there shall be included in the statement of the grounds on which the application is made, a representation of that mark and - (a) the details of the authority with which the mark is registered; (b) the registration number of that mark; and the goods and services in respect of which - (i) that mark is registered; and (ii) the application is based. (3) Where the application is based on a trade mark in respect of which an application for registration has been made, there shall be included in the statement of the grounds on which the application is made a representation of that mark and those matters set out in paragraph (2)(a) through (c), with references to registration being construed as references to the application for registration. (4) Where the application is based on an unregistered mark or other sign which the applicant claims to be protected by virtue of the law of passing off or any other law, there shall be included in the statement of the grounds on which the application is made a representation of that mark or sign and the goods and services in respect of which such protection is claimed. (5) The Registrar shall send a copy of the form referenced in paragraph (1) and the statement of the grounds on which the application for a declaration of invalidity is made to the proprietor. Within sixty days of the date on which the Registrar sends to the proprietor a copy of the form referred to in regulation 58(1) and the statement of the grounds, the proprietor shall file with the Registrar a counter-statement on t h e relevant form in Schedule 2 setting out the grounds on which the proprietor relies. invalidation; section 45 Invalidity: counterstatements (2) Where the proprietor does not file a counter-statement, the Registrar may treat the proprietor as not contesting the application for a declaration of invalidity and the registration of the mark shall, unless the Registrar directs otherwise, be invalidated. (3) The Registrar shall send a copy of the counter-statement on t h e relevant form in Schedule 2 to the applicant. 60. Within ninety days of the date on which the Registrar sends the copy of the counter-statement, the applicant shall submit to the Registrar such evidence by way of witness statement and any accompanying exhibits as desired to adduce in support of the application for a declaration of invalidity, and shall deliver to the proprietor a copy of such evidence. 61. (1) If the applicant submits evidence then within ninety days of the date on which the applicant sends a copy of the evidence to the proprietor, the proprietor shall submit to the Registrar such evidence by way of witness statement and any accompanying exhibits desired, and shall deliver to the applicant a copy of such evidence. (2) If an applicant does not submit evidence within the time-frame prescribed under regulation 60 the applicant shall, unless the Registrar otherwise directs, be deemed to have withdrawn the application. (3) The Registrar shall notify the proprietor of any direction given under paragraph (2). 62. Within ninety days of the date on which the proprietor sends a copy of the evidence to the applicant the applicant may file with the Registrar evidence by witness statement and any accompanying exhibits in reply, and shall deliver to the p ro p rieto r a copy of the evidence, such evidence being confined to matters strictly in reply. 63. (1) Upon completion of the evidence rounds, the Registrar shall give notice to the parties of the date for the hearing of the arguments. (2) The date for the hearing under paragraph (1) shall be at least fourteen days after the date of the notice, unless the parties consent to a shorter notice. (3) Within seven days of the date on which the Registrar sends the notice both parties shall notify the Registrar as to whether or not they wish to be heard. Application for a declaration of invalidity: evidence rounds Proprietor to submit Declaration of invalidity:reply (4) If neither party wishes to be heard the Registrar shall notify the parties of that and proceed to make a decision from the submissions. (5) If either or both parties wish to be heard the Registrar shall re-confirm 64. (1) The Registrar shall not grant an extension of time under any circumstances for the filing of a counter-statement. reasons by either party to grant any reasonable extension of time for proceedings not mentioned in paragraph (1). 65. (1) Upon the joint application of the parties, the Registrar shall at any time after the counter-statement has been submitted, suspend the invalidation (2) The application shall be requested on the basis that the parties are (a) (3) The Registrar shall consider further joint applications to suspend the invalidation proceedings made upon the expiry of the first granted suspension. 66. In any proceedings, the Registrar may by order award to any party such Schedule 3, and direct the manner and the date by which the costs are to be paid. 67. (1) Where a party filing an application for a declaration of invalidity, or a proprietor sending a counter-statement after receipt of a copy of such application, neither resides nor carries on business in the Islands, the Registrar may require the agent acting for and on behalf of such party to give a written guarantee that such party will bear the costs of proceedings before the Registrar and at any stage in the invalidity proceedings may require further security to be given at any time before the Registrar’s decision in the case. invalidation proceedings; section 70(1)(f) invalidation proceedings Invalidation: costs of Declaration of invalidity: security for costs (2) The Registrar may also require security for the costs of any appeal to the Appeals Tribunal from the Registrar’s decision. (3) In default of such security being given, the Registrar, in the case of the proceedings before the Registrar, or in the case of an Appeal, the Appeals Tribunal may treat the party in default as having withdrawn their application for a declaration of invalidity or counter-statement, as the case may be. PART 8 - COLLECTIVE AND CERTIFICATION MARKS 68. Where an application for registration of a collective or certification mark is filed, the applicant shall, within such period of not less than three months file the relevant form in Schedule 2 accompanied by a copy of the regulations governing the use of the mark. 69. (1) An application for the amendment of the regulations governing the use of a registered collective or certification mark shall be filed on the relevant form in Schedule 2. (2) Where it appears to be expedient to the Registrar that the amended regulations should be made available to the public the Registrar shall publish a notice in the Gazette indicating where copies of the amended regulations may be inspected. (3) Any person may, within two months of the date of publication of the notice under paragraph (2), make observations to the Registrar on the amendments relating to the matters referred to in paragraph 6(1) of Schedule 1 to the Law in relation to a collective mark, or paragraph 7(1) of Schedule 2 to the Law in relation to a certification mark and the Registrar shall send a copy of those observations to the proprietor’s registered agent. (4) Any person may, within two months of the date on which the notice was published under paragraph (2), give notice to the Registrar of opposition to the amendment on the relevant form in Schedule 2 which shall include a statement of the grounds of opposition indicating why the amended regulations do not comply with the requirements of paragraph 6(1) of Schedule 1 to the Law, or, paragraph 7(1) of Schedule 2 to the Law, as the case may be. (5) The Registrar shall send a copy of the form referred to in paragraph (4) to the proprietor and the procedure in regulations 29 to 38 shall apply to the proceedings relating to the opposition to the amendment as they apply to proceedings relating to opposition to an application for registration with the following modifications - Filing of regulations for collective and certification marks; Schedules 1 and 2 of the Law Amendment of regulations of collective and certification marks; Schedule 1 and Schedule 2 of the Law (a) any reference to the applicant shall be construed as a reference to the proprietor; (b) any reference to an application for registration shall be construed as a reference to an application for the amendment of the regulations; and any reference to the person opposing the registration shall be construed as a reference to the person opposing the amendment of the regulations. (6) Where an application is made under paragraph (1), the publication fee under paragraph 96 is payable by the applicant. PART 9 - THE REGISTER 70. (1) The Register shall be open for public inspection at the Registry during its hours of business. (2) Where any portion of the Register is kept otherwise than in documentary form, the right of inspection is a right to inspect the material on the 71. The Registrar shall supply a certified copy or extract or uncertified copy or extract of any entry in the Register as may be requested by any person on the relevant form in Schedule 2 and on the payment of the relevant fee. 72. The Registrar shall, on a request made on the relevant form in Schedule 2 by the proprietor of a registered trade mark or a licensee or any person having an interest in or charge on a registered trade mark which has been registered (“the applicant”), enter a change in the applicant’s name or address as recorded in the 73. (1) Where it appears to the Registrar that any matter in the Register has ceased to have effect, before removing it from the Register - (a) the Registrar may publish in the Gazette the fact that it is intended to remove that matter; and (b) where any person appears to the Registrar to be affected by the removal, notice of the intended removal shall be sent to that (2) Within sixty days of the date on which the intention to remove the matter is published, or notice of the intended removal is sent, whichever is later in time - (a) any person may file notice of opposition to the removal on the relevant form in Schedule 2; and Public inspection of Register; section 6(3) Supply of certified copies etc.; section 6(3) Request for change of name or address in Removal of matter from Register; sections 39(5)(b) and 9(4) (b) the person to whom a notice is sent under paragraph (1)(a) may file written objections, if any, to the removal, and where such opposition or objections are made, regulation 29 shall apply. (3) If, after considering any objections or opposition to the removal, the Registrar is satisfied that the matter has not ceased to have effect, the Registrar shall not remove it. (4) Where there has been no response to the Registrar’s notice the Registrar may remove the matter and where representations objecting to the removal of the entry have been made the Registrar may, if after considering the objections the Registrar is of the view that the entry or any part of it has ceased to have effect, remove it or the appropriate part of it. 74. (1) Where a document (other than a form required by the Registrar) is filed at the Registry and the person filing it requests at the time of filing that it or a specified part of it be treated as confidential and gives reasons for the request, the Registrar may direct that it or part of it, as the case may be, be treated as confidential, and the document shall not be open to public inspection while the matter is being determined by the Registrar. (2) Where such direction has been given and not withdrawn, nothing in this regulation shall be taken to authorise or require any person to be allowed to inspect the document, or any part of it to which the direction relates, except by leave of the Registrar. (3) The Registrar shall not withdraw any direction given under this regulation without prior consultation with the person at whose request the direction was given, unless the Registrar is satisfied that such prior consultation is not reasonably practicable. (4) The Registrar may, where the Registrar considers that any document issued by the Registrar should be treated as confidential, so direct, and upon such direction that document shall not be open to public inspection except by leave of the Registrar. (5) Where a direction is given under this regulation for a document to be treated as confidential a record of the fact shall be filed with the document. 75. An application in accordance with section 34 of the Law should be made on the relevant form in Schedule 2. Confidential documents Information about application and registered trade marks; 76. (1) An application for rectification of an error or omission in the Register under section 9(1) of the Law shall be made on the relevant form in Schedule 2 together with - (a) a statement of the grounds on which the application is made; and (b) any evidence to support those grounds. (2) Where any application is made under paragraph (1) by a person other than the respective registered agent, the Registrar - (a) shall send a copy of the application and the statement, together with any evidence filed, to the proprietor’s registered agent; and (b) may give such direction with regard to the filing of subsequent evidence and upon such terms as the Registrar thinks fit. 77. (1) An application to the Registrar for the withdrawal, restriction or amendment may be made by a registered agent of the applicant, such applications being made on the relevant form in Schedule 2. (2) Where, pursuant to section 17 of the Law, a request is made for amendment of an application which has been published in the Gazette the amendment or a statement of the effect of the amendment shall also be published in the Gazette. (3) Where an application for the amendment of a trade mark is published under paragraph (2), the publication fee under regulation 96 is payable by the applicant. PART 10 - THE REGISTRAR 78. Every application made to the Court under the Law shall be served on the 79. Where an order has been made by the Court, the person in whose favour the order has been made (or, where there is more than one person, such persons as the Registrar may direct) shall forthwith file with the Registrar a copy of such order and the Register may thereupon be rectified or altered by the Registrar if the Registrar considers it necessary. 80. Whenever an order is made by the Court, the Registrar may, if the Registrar is of the opinion that the order is of sufficient public interest, publish it in the Gazette. 81. (1) Except where the Law or these regulations otherwise provide, the Registrar may give such directions as to the management of any proceedings as the Registrar thinks fit, and may - Procedure on application for rectification or correction of the Register; section 9 Withdrawal, restriction or amendment application; section 17 Applications to the Court: service on the Copy of Court order for Registrar may publish Court order General powers of Registrar in relation to (a) require a document, information or evidence to be filed within such period as the Registrar may specify; (b) require a translation of any document; require a party or a party’s legal representative to attend a hearing; (d) hold a hearing by telephone or by using any other method of direct oral communication; (e) allow a submission to be amended; (f) stay the whole, or any part, of the proceedings either generally or until a specified date or event; (g) consolidate proceedings; (h) direct that part of any proceedings be dealt with as separate proceedings; or (i) exclude any evidence which the Registrar considers to be inadmissible. (2) The Registrar may control the evidence by giving directions as to - (a) the issues on which evidence is required; and (b) the way in which the evidence is to be placed before the (3) When the Registrar gives directions under any provision of these regulations, the Registrar may - (a) make them subject to conditions; and (b) specify the consequences of failure to comply with the directions or a condition. (4) The Registrar may at any stage of any proceedings direct that the parties to the proceedings attend a case management conference or pre-hearing review. 82. (1) Where any document or part thereof which is in a language other than English is filed, the Registrar may require that there be furnished a translation into English of the document or a part, verified to the satisfaction of the Registrar as corresponding to the original text. (2) The Registrar may refuse to accept any translation which the Registrar considers to be inaccurate in which event there shall be furnished to the Registrar another translation of the document in question verified in accordance with 83. (1) Without prejudice to any provisions of the Law or these regulations requiring the Registrar to hear any party to proceedings under the Law or these regulations, or to give such party an opportunity to be heard, the Registrar shall, Translations Decisions of Registrar to be taken after hearing before taking any decision on any matter which is or may be adverse to any party to any proceedings, give that party an opportunity to be heard. (2) The Registrar shall give that party at least fourteen days’ notice, beginning on the date on which notice is sent, of the time when the party may be heard unless the party consents to shorter notice. 84. (1) Subject to regulation 81(2), evidence filed in any proceedings under the Law or these regulations may be given - (a) by witness statement, affidavit, statutory declaration; or (b) in any other form which would be admissible as evidence in proceedings before the Court. (2) A witness statement may only be given in evidence if it includes a statement of truth. (3) Evidence at hearings is to be by witness statement unless the Registrar or any enactment requires otherwise. (4) For the purposes of these regulations, a statement of truth - (a) means a statement that the person making the statement believes that the facts stated in a particular document are true; and (b) shall be dated and signed by - (i) in the case of a witness statement, the maker of the statement; and (ii) in any other case, the party or legal representative of such party. (5) In these regulations, a witness statement is a written statement that is signed by the person making the statement and contains the evidence which that person would be allowed to give orally. (6) Under these regulations, evidence shall only be considered filed when - (a) it has been received by the Registrar; and (b) it has been sent to all other parties to the proceedings. 85. The Registrar shall have the powers of the Clerk of the Grand Court as regards - (a) the attendance of witnesses and their examination on oath; and (b) the discovery and production of documents, but the Registrar shall have no power to punish summarily for contempt. Evidence in proceedings before the Registrar Registrar to have power of the Clerk of the Grand Court 86. The hearing before the Registrar of any dispute between two or more parties relating to any matter in connection with an application for the registration of a trade mark or an actual registered trade mark shall be in public unless the Registrar, after consultation with those parties who appear in person or are represented at the hearing, otherwise directs. 87. In any proceedings, the Registrar may, by order, award to any party such Schedule 3, and shall direct the manner and by whom costs are to be paid. 88. (1) The Registrar may require any person who is a party in any proceedings not already provided for under regulations 38, 57 or 67 to give security for costs in relation to those proceedings; and may also require security for the costs of any appeal from the Registrar’s decision. (2) In default of such security being given, the Registrar, where the proceedings are before the Registrar, or in the case of an appeal, the Appeals Tribunal may treat the party in default as having withdrawn their application, opposition, objection or intervention, as the case may be. (3) The Registrar may, at any stage before giving a decision in the respective proceedings, require further security for costs to be given in relation to those proceedings. 89. (1) Subject to paragraph (2), the Registrar shall send to each party to the proceedings written notice of any decision made in any proceedings before the Registrar stating the reasons for that decision and, for the purposes of any appeal against that decision, the date on which the notice is sent shall be taken to be the date of the decision. (2) Where a statement of the reasons for the decision is not included in the notice sent under paragraph (1), any party may, within 30 days of the date on which the notice was sent to that party, request the Registrar on the relevant form in Schedule 2 request that the Registrar provide a statement of the reasons for the decision and upon such request the Registrar shall provide reasons, and the date on which the reasons are sent shall be deemed to be the date of the Registrar’s decision for the purpose of any appeal against it. (3) The Registrar may publish in the Gazette any matter in relation to an application, proceedings or decision under the Law where it is considered expedient to do so and the publication fee under regulation 96 shall be payable. Hearings before Registrar to be in public Registrar may award costs Security for costs; section 70(1)(t) Decision of Registrar PART 11 - APPEALS 90. (1) Except as otherwise expressly provided by these regulations, an appeal lies from any decision of the Registrar made under these regulations relating to a dispute between two or more parties in connection with a trade mark, including a decision which terminates the proceedings as regards one of the parties or a decision awarding costs to any party (referred to as “a final decision”) or a decision which is made at any point in the proceedings prior to a final decision (referred to as “an interim decision”). (2) An interim decision (including a decision refusing leave to appeal under this paragraph) may only be appealed against independently of any appeal against a final decision with the leave of the Registrar. 91. (1) Notice of appeal to the Appeals Tribunal under section 58 of the Law shall be filed on the relevant form in Schedule 2 which shall include the appellant’s grounds of appeal and the case in support of the appeal. (2) The notice shall be filed with the Chairman and a copy filed with the Registrar within the period of fourteen days of the date of the Registrar’s decision which is the subject of the appeal (referred to as “the original decision”). (3) Where any person other than the appellant was a party to the proceedings before the Registrar in which the original decision was made (referred to as “the respondent”), the Registrar shall send to the respondent a copy of the notice and the statement and the respondent may, within the period of twenty-one days of the date on which the notice and statement was sent, file a notice responding to the notice of appeal. (4) The respondent’s notice shall specify any grounds on which the respondent considers the original decision should be maintained where these differ from or are additional to the grounds given by the Registrar in the original decision. (5) The Registrar shall send a copy of the respondent’s notice to the Appeals Tribunal and a copy to the Appellant. 92. (1) The Appeals Tribunal shall send written notice of the time and place appointed for the oral hearing of the appeal - (a) where no person other than the appellant was a party to the proceedings in which the decision appealed against was made, to the Registrar and to the appellant; and Decisions subject to appeal; section 58 Appeal to Appeals Tribunal; section 58 Hearing and determination of appeal; section 58(8) (b) in any other case, to the Registrar and to each person who was a party to those proceedings. (2) The Appeals Tribunal shall send the notice in paragraph (1) at least fourteen days before the time appointed for the oral hearing. (3) If all the persons notified under paragraph (1) inform the person appointed that they do not wish to make oral representations then - (a) the person appointed may hear and determine the case on the basis of written representations; and (b) the time and place appointed for the oral hearing may be vacated. (4) Regulations 80, 83, 85 and 86 shall apply to the Appeals Tribunal and to proceedings before the Appeals Tribunal as they apply to the Registrar and to proceedings before the Registrar. (5) If there is an oral hearing of the appeal, then regulation 84 shall apply to the Appeals Tribunal and to proceedings before the Appeals Tribunal as it applies to the Registrar and to proceedings before the Registrar. (6) A copy of the decision of the Appeals Tribunal shall be sent, with a statement of the reasons for the decision, to the Registrar and to each person who was a party to the appeal. PART 12 - GENERAL 93. (1) Subject to regulation 95, the Registrar may authorise the rectification of any irregularity in procedure (including the rectification of any document filed) connected with any proceeding or other matter before the Registrar or the Registry. (2) Any rectification made under paragraph (1) shall be made - (a) after giving the parties such notice; and (b) subject to such conditions, as the Registrar may direct. 94. (1) The Registrar may certify any day as an interrupted day where - (a) there is an event or circumstance causing an interruption in the normal operation of the Registry; or (b) there is a general interruption or subsequent dislocation in the postal services of the Cayman Islands. Correction of irregularities in procedure Interrupted day (2) Any certificate of the Registrar made under paragraph (1) shall be prominently displayed in the Registry and published in the Gazette. (3) The Registrar shall, where the time for doing anything under these regulations expires on an interrupted day, extend that time to the next following day not being an interrupted day or an excluded day. (4) In this regulation - “excluded day” has the same meaning as in section 8(b) of the Interpretation Law (1995 Revision); and “interrupted day” means a day which has been certified as such under 95. (1) Subject to paragraphs (4) and (5), the Registrar may, at the request of the person or party concerned or at the Registrar’s own initiative extend a time or period prescribed by these regulations or a time or period specified by the Registrar for doing any act and any extension under this paragraph shall be made subject to such conditions as the Registrar may direct. (2) A request for extension under this regulation may be made before or after the time or period in question has expired and where the application for registration has not been published and the request for an extension is made before the time or period in question has expired, it shall be made on the relevant form in Schedule 2. (3) Where an extension under paragraph (1) is requested in relation to proceedings before the Registrar, the party seeking the extension shall send a copy of the request to every other person who is a party to the proceedings. (4) The Registrar shall extend a flexible time limit, except a time or period which applies in relation to proceedings before the Registrar or the filing of an appeal to the Appeals Tribunal under regulation 91(2), where - (a) the request for extension is made before the end of the period of sixty days beginning with the date that the relevant time or period expired; and (b) no previous request has been made under this paragraph. (5) A time limit listed in Schedule 4 (whether it has already expired or not) may be extended under paragraph (1) if - (1995 Revision) Alteration of time limits (a) the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the Registrar; and (b) it appears to the Registrar that the irregularity should be rectified. (6) In this regulation - “flexible time limit” means - (a) a time or period prescribed by these regulations; or (b) a time or period specified by the Registrar for doing any act or carrying out any proceedings; and “proceedings before the Registrar” means any dispute between two or more parties relating to a matter before the Registrar in connection with a trade mark. 96. The publication fee for any document required to be published by the Registrar in the Gazette in support of any registration, appeal, proceeding or any other matter shall be as set out in Schedule 3. SCHEDULE 1 (Regulation 3) Fees Item Particulars Fee Notice of hearing attendance $50.00 Publication fee Application to register a trade mark, collective mark or for one class $75.00 for each additional class Application for a statement of reasons for Registrar’s decision Application to appoint or change agent $150.00 Counter-statement $50.00 Application to renew or restore a trade mark $300.00 for late renewal $350.00 for restoration Request to divide a series mark registered on the old register Application to amend regulations governing the use of a collective mark or certification mark Application to amend a trade mark Change of owner’s name or address $150.00 Application to record a transfer of ownership Application to record, amend or terminate a licence Application to record, amend or terminate a security interest Notice to surrender a registration Application to revoke a registered trade mark Application for a declaration of invalidity Regulations governing the use of a collective or certification mark Request for a certified copy Request to rectify registry Request for withdrawal of Notice of appeal to the Appeals Tribunal Request for extension of time Application to be licenced by Registrar as a registered agent Penalty for failure to appoint an agent within 180 days Annual fee for one class $100.00 for each additional class Late payment of annual fee (for each year of default) (in aggregate, per trade mark, irrespective of the number of classes registered) Search fee $50.00 Registered agent annual fee: number of registered trade marks as at 31st December Under 10: $200 10-99: $500 100-249: $1,000 250-499: $1,500 500 & more $2,000 Gazette publication fee SCHEDULE 2 (Regulation 4) INDEX AND FORMS Index Form Number Name Regulation(s) H1 Notice of hearing attendance TM1 Application to register a trade mark, collective mark or certification mark 16(1) TM2 Application for statement of reasons for Registrar’s decision 89(2) TM3 Application to appoint or change of agent 10(1) TM4 29(1) 30(1) 35(1) 38(1) 46(1) 69(4) 73(2)(a) TM5 Counter-statement 30(1) 49(1) 59(1) TM6 Application to renew or restore a trade mark 42(1) TM8 to amend regulations governing the use of Collective Mark or 69(1) TM9A Application to amend trade mark application 16(4) TM9B Change of owner’s name or address 16(7) TM10 Application to record a transfer ownership 45(a) 45(d) 45(e) 45(f) TM11 to record, amend or terminate a license 45(b) TM12 to record, amend or terminate a security interest 45(c) TM13 Notice to surrender a TM14 Application to revoke a registered trade mark TM15 Application for a declaration of invalidity 58(1) TM16 Regulations governing the use of collective or TM17 Request for a certified copy TM18 Request for information TM19 Request to rectify the 76(1) TM20 Request for withdrawal of 77(1) TM21 Notice of appeal to Appeals Tribunal 91(1) TM22 Request for an extension of time 91(2) TM23 Registration of registered agent 10(4) TM24 Request to be removed as 11(1) Forms SCHEDULE 3 (Regulations 37, 56, 66, 88) Costs in proceedings before the Registrar Task Cost 1. Preparing a statement and considering the other side’s statement From $200 to $600 depending on the nature of the statements, for example their complexity and relevance. 2. Preparing evidence and considering and commenting on the other side's evidence From $500 if the evidence is light to $4000 if the evidence is substantial. The award could go above this range in exceptionally large cases but will be cut down if the successful party had filed a significant amount of unnecessary evidence. 3. Preparing for and attending a hearing Up to $1500 per day of hearing, capped at $5000 for the full hearing unless one side has behaved unreasonably. From $300 to $600 for preparation of submissions, depending on their substance, if there is no oral hearing. 4. Expenses (a) Official fees arising from the action and paid by the successful party (other than fees for extensions of time). (b) The reasonable travel and accommodation expenses for any witnesses of the successful party required to attend a hearing for cross examination. Off scale costs 5. The Registrar has the ability to award costs off the scale, approaching full compensation, to deal proportionately with wider breaches of rules, delaying tactics or other unreasonable behaviour. The overriding factor in determining unreasonable behaviour is that the Registrar should act judicially in all the facts of a case. A party having lost, is not in and of itself indicative of unreasonable behaviour. 6. The amount awarded in cases of unreasonable behaviour should be commensurate with the extra expenditure a party has incurred as the result of unreasonable behaviour on the part of the other side. 7. Any claim for cost approaching full compensation or for “extra costs” will need to be supported by a bill itemizing the actual costs incurred. 8. Depending on the circumstances the Registrar may also award costs below the minimum indicated by the standard scale. Costs arising from interlocutory or preliminary hearings 9. The Registrar will always consider dealing with costs as the cause of them arises, either by specifically making no award if the issues were fairly well balanced or by making an award to the successful party. Conditional fee arrangements 10. If one of the parties in dispute before the Registrar has agreed a conditional fee arrangement ("CFA") with their legal representative, any "success fee" will not be taken into account when assessing costs. If the normal scale is applied, there will be no uplift to take account of any CFA. Even when off-scale costs are awarded, the amount will be assessed using the usual principles for assessing offscale costs, and the amount will not be affected by the existence of a CFA. 11. A party does not need to provide information about any CFA in relation to proceedings before the Registrar. SCHEDULE 4 (Regulation 95) Alteration of time limits Regulation 29(1) (filing notice of opposition) Regulation 30(1) (counter-statement in opposition proceedings) Regulation 69(4) (opposition to amendment of regulations of collective and certification marks) Regulation 41 (renewal of registration) Regulation 42(1) (late renewal) Regulation 43 (restoration of registration) Regulation 49(1) (counter-statement for revocation) Regulation 59(1) (counter-statement for invalidity) Regulation 73(2)(a) (opposition to removal of matter from Register) Regulation 95(4) (period for making a retrospective request to extend a flexible time period) Made in Cabinet the 17th day of May, 2017. Kim Bullings Clerk of the Cabinet.