Section 53A
Section 53A
(1)
The Attorney General may, with the approval of His Majesty the
Sultan and Yang Di-Pertuan, make rules to give effect in Brunei Darussalam to the provisions of the Madrid Protocol or of any treaty, convention, arrangement or engagement relating to trade marks to which Brunei
Darussalam is a party.
[S 1/2020]
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B.L.R.O. 6/2022 49
(2)
Without prejudice to the generality of subsection (1), rules may, in particular, be made to provide for —
(a)
the making of applications for international registrations by way of the Registry as office of origin;
(b)
the procedures to be followed where the basic
Brunei Darussalam application or registration fails or ceases to be in force;
(c)
the procedures to be followed where the Registry receives from the International Bureau or any body specified in the rules a request for extension of protection to Brunei Darussalam;
(d)
the effects of a successful request for extension of protection to Brunei Darussalam;
(e)
the transformation of an application for an international registration, or an international registration, into a national application for registration;
(f)
the communication of information to the International
Bureau; and
(g)
the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals.
(3)
Provision may also be made in the rules to apply, in relation to an international trade mark (Brunei Darussalam), the provisions of section 22
and Part 4.
Protection of Well-Known Trade Marks
Protection of well-known trade marks 54.
(1)
References in this Act to a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark, including such a trade mark entitled to the benefits of the Paris Convention by virtue of the World Trade Organisation Agreement are to the trade mark of a person who —
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(a)
is a citizen of, is domiciled, ordinarily resident or has a right of abode in, a Paris Convention country or a World Trade
Organisation country; or
(b)
is domiciled in, or has a real and effective industrial or commercial establishment in, any such country, whether or not that person carries on business, or has any goodwill, in
Brunei Darussalam. References to the proprietor of such a trade mark shall be construed accordingly.
(2)
Subject to section 49, the proprietor of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark is entitled to restrain by injunction the use in Brunei Darussalam of a trade mark which, or the essential part of which, is identical or similar to his trade mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.
(3)
Nothing in subsection (2) affects the continuation of any bona fide use of a trade mark begun before the commencement of this section.
Emblems etc.
National emblems etc. of Paris Convention and World Trade
Organisation countries 55.
(1)
A trade mark which consists of or contains the flag of a Paris
Convention country or a World Trade Organisation country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the Registrar that use of the flag in the manner proposed is permitted without such authorisation.
(2)
A trade mark which consists of or contains the armorial bearings or any other state emblem of a Paris Convention country or a World Trade
Organisation country which is protected under the Paris Convention or the
World Trade Organisation Agreement shall not be registered without the authorisation of the competent authorities of that country.
(3)
A trade mark which consists of or contains an official sign or hallmark adopted by a Paris Convention country or a World Trade
Organisation country and indicating control and warranty shall not, where
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the sign or hallmark is protected under the Paris Convention, be registered in relation to goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of that country.
(4)
The provisions of this section as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.
(5)
Nothing in this section prevents the registration of a trade mark on the application of a citizen of a country who is authorised to make use of a state emblem, or official sign or hallmark, of that country, notwithstanding that it is similar to that of another country.
(6)
Where by virtue of this section the authorisation of the competent authorities of a Paris Convention country or a World Trade
Organisation country is or would be required for the registration of a trade mark, those authorities are entitled to restrain by injunction any use of the mark in Brunei Darussalam without their authorisation.
Emblems etc. of certain international organisations 56.
(1)
This section applies to —
(a)
the armorial bearings, flags and other emblems; and
(b)
the abbreviations and names, of organisations of which the government or governments of one or more
Paris Convention countries or World Trade Organisation countries are members.
(2)
A trade mark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris Convention or the
World Trade Organisation Agreement shall not be registered without the authorisation of the organisation concerned, unless it appears to the Registrar that the use of the emblem, abbreviation or name in the manner proposed —
(a)
is not such as to suggest to the public that a connection exists between the organisation and the trade mark; or
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(b)
is not likely to mislead the public as to the existence of a connection between the user and the organisation.
(3)
The provisions of this section as to emblems of an organisation apply equally to anything which from a heraldic point of view imitates any such emblem.
(4)
Where by virtue of this section the authorisation of an organisation is or would be required for the registration of a trade mark, that organisation is entitled to restrain by injunction any use of the mark in
Brunei Darussalam which was not authorised by it.
(5)
Nothing in this section affects the rights of a person whose bona fide use of a trade mark began before the making of this Act.
Notification under Article 6ter of Paris Convention 57.
(1)
For the purpose of section 55, state emblems of a Paris
Convention country or a World Trade Organisation country (other than the national flag), and official signs or hallmarks, shall be regarded as protected under the Paris Convention or the World Trade Organisation Agreement (as the case may be) only if, or to the extent that —
(a)
that country has notified Brunei Darussalam in accordance with Article 6ter (3) of that Convention that it desires to protect that emblem, sign or hallmark;
(b)
the notification remains in force; and
(c)
Brunei Darussalam has not objected to it in accordance with
Article 6ter (4) or any such objection has been withdrawn.
(2)
For the purpose of section 56, the emblems, abbreviations and names of an organisation to which that section applies shall be regarded as protected under the Paris Convention or the World Trade Organisation
Agreement only if, or to the extent that —
(a)
that organisation has notified Brunei Darussalam in accordance with Article 6ter (3) of that Convention that it desires to protect that emblem, abbreviation or name;
(b)
the notification remains in force; and
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(c)
Brunei Darussalam has not objected to it in accordance with
Article 6ter (4) or any such objection has been withdrawn.
(3)
Notification under Article 6ter (3) of the Paris Convention shall have effect only in relation to applications for registration made more than 2 months after the receipt of the notification.
(4)
The Registrar shall keep and make available for public inspection, at all reasonable hours and free of charge, a list of —
(a)
the state emblems and official signs or hallmarks; and
(b)
the emblems, abbreviations and names of organisations, which are protected under the Paris Convention by virtue of notification under Article 6ter (3).
Acts of agents or representatives
Acts of agents or representatives 58.
(1)
The following provisions apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the mark in a Paris
Convention country.
(2)
If the proprietor opposes the application, registration shall be refused.
(3)
If the application (not being so opposed) is granted, the proprietor may —
(a)
apply for a declaration of the invalidity of the registration;
or
(b)
apply for the rectification of the register so as to substitute his name as the proprietor of the registered trade mark.
(4)
The proprietor may (notwithstanding the rights conferred by this
Act in relation to a registered trade mark) restrain by injunction any use of the trade mark in Brunei Darussalam which is not authorised by him.
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(5)
Subsections (2), (3) and (4) do not apply if, or to the extent that, the agent or representative justifies his action.
Time limit for application under section 58(3)