Source document: https://docs-lawep.s3.us-east-2.amazonaws.com/1697728949235.pdf (Fiji)
CLAUSES TRADEMARKS BILL 2020 (BILL NO.

45 OF 2020) PART 1—PRELIMINARY 1.

2.

3.

4.

Short title and commencement Interpretation Objectives Act binds the State PART 2—REGISTRABILITY OF TRADEMARKS Division 1—Preliminary Nature of registered trademark Rights that attach to registered trademarks Additional matters that relate to rights attaching to registered trademarks Rights that attach to application 5.

6.

7.

8.

9.

When trademark registrable 10.

11.


Additional provisions that relate to registrability of certification trademarks Additional provisions that relate to registrability of collective trademarks 12.

13.

14.

15.

16.

1617.

1718.

1819.

1920.

2021.

2122.

2223.

2324.
Division 2—Absolute grounds for not registering trademark Absolute grounds for not registering trademark: general No appeal against decision of Minister Non-distinctive trademark not registrable Relevance of colour to distinctive character of trademark Trademark consisting of or containing a geographical indication Trademark that contains commonly used chemical names must not be registered Division 3—Relative grounds for not registering trademark Registrability of trademark that contains certain words Registrability of trademark that contains person’s name Registrability of identical or similar trademark Exceptions Registrability of trademark that contains representation of flag, etc., generally Registrability of trademark that contains flag, State emblems, etc., of convention country Registrability of trademark that contains armorial bearings, etc., of certain international organisations 2425.
When emblems, etc., are protected under Paris Convention or TRIPS Agreement 2 PART 3—PROCESS FOR OBTAINING REGISTRATION OF TRADEMARK AND OTHER MATTERS Division 1—Classification 2526.

Classification of trademarks Division 2—Applications Application: how made Joint applications Priority of applications for the registration of identical or similar trademarks Commissioner’s requirements in relation to applications without priority Priority of application to which convention country application relates 2627.
2728.

2829.

2930.

3031.

3132.

Withdrawal, etc., of application 3233.

When Commissioner or court may amend application 3334.

3435.

3536.

3637.

3738.

3839.

3940.


Examination of application Acceptance of application Applicant must be notified of non-complying application Revocation of acceptance of application Rejection of application Abandonment of application Applicant must be notified of grounds, etc., of conditional acceptance or rejection of application Advertisement of accepted application 4041.

Division 3—Opposition to application 4142.

4243.

4344.
4243.

4344.

Opposition to accepted application Applicant’s counter-statement Commissioner’s determination on opposition Division 4—Registration of trademark 4445.

When trademark must be registered 4546.

4647.

Commissioner’s requirements on registration Commissioner may dispense with production of probate or letters of administration in certain cases Replacement of certificate of registration 4748.

Division 5—Additional matters that relate to certification trademarks 4849.
When rules that govern use of certification trademark must be provided 4950.

5051.

Consideration of application for the registration of certification trademark Approved rules must be deposited at Fiji Intellectual Property Office Division 6—When registration of trademark ceases 5152.

5253.

Duration of registration Renewal of registration 5354.

5455.

5556.

5657.

5758.

5859.

5960.

6061.

6162.

6263.

6364.

6465.

6566.

6667.

6768.

6869.

6970.

7071.

7172.

7273.

7374.

7475.

7576.

7677.
3 Procedure for renewal of registration Effect of registered-past expiry date status Voluntary cancellation of registration of trademark Cancellation or alteration of registration of trademark for breach of condition Cancellation or alteration of registration of certification trademark Cancellation or alteration of registration of collective trademark Application for revocation of registration of trademark Grounds for revoking registration of trademark Onus of proof for revocation of registration of trademark for non-use Revocation of registration of trademark Voluntary disclaimer of trademark by owner Disclaimer of trademark as condition of not revoking its registration Disclaimer of trademark for public interest reasons Rights affected by disclaimer Invalidity of registration of trademark Effect of declaration of invalidity Presumption of validity of registration of trademark Correction of register Division 7—Other matters Alteration of registered trademark not permitted Alteration of register Alteration of certification trademark rules Advertisement of application for alteration of rules Registration of title to trademark Assigning or transmitting right to use trademark PART 4—LEGAL PROCEEDINGS Division 1—Civil proceedings for infringement 8283.
7778.

7879.

7980.

8081.

8182.

How Act affects other rights Infringement where identical or similar sign used in course of trade Infringement where non-compliance with certain contractual requirements No defence that infringement arose from use of company name No infringement where trademark used in circumstances not covered by registration No infringement where more than one identical or similar registered trademarks used No infringement for comparative advertising of registered trademark 8384.
No infringement for honest practices 8485.

No infringement for certain continuous use of unregistered trademark 8586.

No infringement for use in relation to certain identical or similar goods 8687.

8788.

Exhaustion of rights conferred by registered trademark 8889.

When owner or licensee consents to use of registered trademark 4 8990.

No proceedings for infringement of unregistered trademark 9091.
Time for bringing proceedings for infringement of registered trademark 9192. Who may apply for relief for infringement of registered trademark 9293.

Licensee may request owner of registered trademark to bring proceedings 9394.

Consequences of owner of registered trademark not bringing proceedings 9495.

Consequences of licensee commencing proceedings 9596.

Unjustified proceedings 9697.

Types of relief available for infringement of registered trademark 9798.
Damages for infringement of collective trademark 9899.

Order for erasure, etc., of offending sign 99100.

Order for delivery up of infringing goods, infringing material, or infringing object 100101.

Order for disposal of infringing goods, infringing material, or infringing object 101102.

Matters to be considered by court 102103.

Directions for service 103104.

Rights of persons with interest in infringing goods, infringing material, or infringing object 104105.
When order under section 100101 takes effect 105106.

Miscellaneous court order if more than one person interested in infringing 106107. goods, infringing material, or infringing object Position where no order made under section 100101 Division 2—Criminal proceedings 107108.

When criminal proceedings may be commenced 108109.

Liability of officers of body corporate 109110.

Offence to counterfeit registered trademark 110111.

Offence to falsely apply registered trademark to goods or services 111112.
Offence to make object for making copies of registered trademark, etc.

112113.

Offence to possess object for making copies of registered trademark, etc.

113114.

Offence to import or sell, etc., goods with falsely applied registered trademark 114115.

115116.

Order for delivery up in criminal proceedings 116117.

When order for delivery up may be made 117118.

Order for disposal of goods or other object ordered to be delivered up 118119.

Matters to be considered by court 119120.


Directions for service 120121.

Rights of persons with interest in goods or other object 121122.

When order under section 117118 takes effect 122123.

Miscellaneous court orders if more than one person interested in goods or Penalties for offences 123124. other object Position where no order made under section 117118 Division 3—Border Protection Measures 5 Interpretation of Division 3 124125.

125126.

Applications for intervention 126127.

127128.

128129.
127128.

128129.

129130.

Ex officio action 130131.

Disposal of infringing goods 131132.

Liability Procedure Suspension Proceedings relating to the merits Division 4—Miscellaneous 132133.

Application to Commissioner or court 133134.

Commissioner’s appearance in certain proceedings 134135.

Mode of giving evidence in proceedings before Commissioner 135136.

Evidence of entries, documents, etc.

136137.

Registration is prima facie evidence of validity 137138.
Appeal against decision of Commissioner that relates to assignments and transmissions 138139.

Trade usage must be considered 139140.

Certificate of validity 140141.

Costs 141142.

Commissioner or court may require security for costs 142143.

No costs on appeal against refusal to certify or to authorise use 143144.

Costs of Commissioner in proceedings before court 144145.

Appeals in relation to Commissioner’s decisions 145146.

Notice of appeal 146147.

Hearing of appeal 147148.


Determination of appeals 148149.

Provisions pending determination of appeal PART 5—ADMINISTRATIVE PROVISIONS AND MISCELLANEOUS Division 1—Commissioner of Trademarks 149150.

Commissioner of Trademarks 150151.

Functions of Commissioner 151152.

Commissioner may delegate 152153.

Liability of Commissioner and others 153154.

Hearing before exercise of Commissioner’s discretion Division 2—Register of trademarks 154155.

Register of trademarks 155156.

Contents of register 156157.


No notices of trusts may be entered in register 6 Search of register 157158.

158159.

Offence to make false entry in register 159160.

Offences relating to false representation of trademark Division 3—Miscellaneous Substitution of person other than applicant generally Substitution of person other than opponent on notice of opposition 160161.

No compensation for diminution in rights attaching to trademark 161162.

Opening hours of Fiji Intellectual Property Office 162163.
Closing of Fiji Intellectual Property Office at short notice 163164.

Recognition of agents 164165.

165166.

166167.

Amendment of documents other than application 167168.

168169.

Application of section 169170 169170.

Method of service of notices 170171.

Regulations 171172.

Repeal 172173.

Transitional Fees BILL NO.


45 OF 2020 7 A BILL FOR AN ACT TO PROVIDE FOR THE REGISTRATION OF TRADEMARKS IN FIJI AND FOR RELATED MATTERS ENACTED by the Parliament of the Republic of Fiji— PART 1—PRELIMINARY Short title and commencement 1.—(1) This Act may be cited as the Trademarks Act 20202021.

(2) This Act comes into force on a date or dates appointed by the Minister by notice in the Gazette.
2.—(1) In this Act, unless the context otherwise requires— Interpretation “actual date of registration” means the date entered on the register by the Commissioner under section 4546(a); “applicant” means, as the case may be, a person who applies for— (a) the registration of a trademark and includes the assignee of an application, if the assignment has been effected under section 7476; or 8 (b) the the suspension of customs clearance ifof imported goods under Part 4, Division 3; “application” means, as the case may be— (a) an application for the registration of a trademark, and includes an application for the registration of a series of trademarks; or (b) an application for the suspension of customs clearance ifof imported goods under Part 4, Division 3; “assignment” means assignment by the acts of the parties concerned; “certification trademark” means a sign capable of— (a) being represented graphically; and (b) distinguishing, in the course of trade— (i) goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic from goods not so certified; or (ii) services certified by any person in respect of quality, accuracy, performance or other characteristic from services not so certified; “collective association” means a body (whether incorporated or not) that has or is able to have members, and is— (a) constituted for the joint benefit of its members for the time being; and (b) so constituted that its membership at any time can be ascertained; “collective trademark” means a sign capable of— (a) being represented graphically; and (b) distinguishing the goods or services of members of the collective association that is the owner of the sign from those of persons who are not members of the collective association; “Commissioner” means the Commissioner of Trademarks; “condition” includes a limitation of the exclusive right to use a trademark given by the registration of the trademark, including a limitation of that right as to— (a) mode of use; (b) use in
 relation to goods to be sold or otherwise traded in any place within Fiji; (c) use in relation to services to be provided within Fiji; and Trademarks— of 20202021 9 (d) use in relation to goods to be exported to any market outside Fiji; “convention country” means an entity as prescribed by regulations; “convention country application” means an application for the registration of a trademark that is made in a convention country, whether before or after it became a convention country, and that is, in accordance with the— (a) (b) terms of a treaty between 2 or more convention countries, equivalent to an application made in any one of those convention countries; or law of any convention country, equivalent to an application made in that convention country; “counterfeit trademark goods” means any goods, including packaging, bearing without authorisation a trademark which is identical to the trademark of the rights holder validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the rights holder of the trademark in question; “court” means the High Court of Fiji; “deceased owner” means a registered owner of any trademark who has died, whether before or after the commencement of this Act, and includes an applicant for the registration of a trademark who has died before it is registered, whether before or after the commencement of this Act; “deemed date of registration” means— (a) in the case of a trademark to which section 3031 applies, the date of the application in the convention country, subject to any enactment relating to international arrangements; or (b) in any other case, the date of the application; “geographical indication” means an indication which identifies a good as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to
 its geographical origin; “infringing goods”, in relation to a registered trademark, means goods that bear, or goods the packaging of which bears, a sign that is identical or similar to the registered trademark and— (a) (b) the application of the sign to the goods or their packaging is an infringement of the registered trademark; or the sign has been used in relation to the goods or their packaging in a way that infringes the registered trademark; Trademarks— of 20202021 10 “infringing material”, in relation to a registered trademark, means material that bears a sign that is identical or similar to the registered trademark and either the sign is— (a) used for labelling or packaging goods, as a business paper, or for advertising goods or services, in a way that infringes the registered trademark; or (b) intended to be used in a way that would infringe the registered trademark; “infringing object”, in relation to a registered trademark, means an object that is— (a) (b) specifically designed or adapted for making copies of a sign that is identical or similar to the registered trademark; and in the possession, custody or control of a person who knows or has reason to believe that the object has been or is to be used to produce infringing goods or material; “licensee”, in relation to a trademark, means a person whose use of the trademark is authorised by, and subject to the control of, the owner of the trademark; “Madrid Protocol” means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on 27 June 1989, as amended from time to time; “member” means— (a) (b) in relation to a collective association, a member of the association; and in relation to a collective trademark, a member of the collective association that is the owner of the collective trademark; “Minister” means the Minister responsible for trademarks; “Ministry” means the Ministry responsible for trademarks; “Nice Agreement” means the Nice Agreement
 Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks adopted at Nice on 15 June 1957, as revised or amended from time to time; “Nice Classification” means the classification of goods and services for the registration of marks published from time to time under the Nice Agreement; “owner” means— (a) in relation to a registered trademark that is not a certification trademark or a collective trademark, the person in whose name the trademark is registered; Trademarks— of 20202021 11 (b) (c) in relation to a collective trademark that is registered, the collective association in whose name the trademark is registered; in relation to a certification trademark that is registered, the person who certifies the goods or services to which the certification trademark relates; and (d) in relation to an unregistered trademark, the person who owns all of the rights in the mark; “Paris Convention” means the Convention for the Protection of Industrial Property as revised and amended at Stockholm on July 14, 1967; “Permanent Secretary” means the Ppermanent Ssecretary responsible for trademarks; “protected international trademark (Fiji)” means a trademark that is entitled to protection in Fiji under the Madrid Protocol; “qualified person”, in relation to a deceased owner, means a person who satisfies the Commissioner— (a) (b) (c) that he or she has obtained or is entitled to obtain probate of the will of the deceased owner or letters of administration in his or her estate in the place where the deceased owner was domiciled at his or her death, or that he or she is the legal representative of the deceased owner in that place; that probate of the will of the deceased owner or letters of administration in his or her estate have not been granted or resealed in Fiji; that the interests of the creditors of the deceased owner, and of all persons beneficially interested under his or her will or on his or her intestacy, will be adequately
 safeguarded if the Commissioner registers the qualified person as the owner of the trademark; “register” means the register of trademarks kept under section 154155; “registered trademark” means, subject to section 5455, a trademark that is on the register; “series of trademarks” means a number of trademarks for the same goods or description of goods or the same services or description of services, as the case may be, that— (a) resemble each other in their material particulars; and (b) differ only in respect of one or more of the following matters— (i) statements of the goods or services for which they are, or are proposed to be, used; Trademarks— of 20202021 12 (ii) statements of number, price, quality, or names of places; (iii) other matters of a non-distinctive character that do not substantially affect the identity of the trademarks; or (iv) colour; “sign” includes— (a) a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word; and (b) any combination of signs; “specification” means the goods or services specified on the application for the registration of the trademark in relation to which the registered trademark is to be used or is proposed to be used; “trademark”— (a) means any sign capable of— (i) being represented graphically; and (ii) distinguishing the goods or services of one person from those of another person; and (b) includes, except in section 7677, a certification trademark and collective trademark; “transmission” means transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer that is not assignment; “TRIPS Agreement” means the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement, as revised or amended from time to time; “working day” means a day of the week other than Saturday, Sunday or a public holiday; “writing” includes the— (a) (b) recording of words in a
 permanent and legible form; recording of words by electronic means that can be retrieved and read; and (c) display of words by any form of electronic or other means of communication that is subsequently recorded by electronic means that can, by any means, be retrieved and read; and “WTO Agreement” means the World Trade Organization Agreement signed in Marrakesh in 1994, as revised or amended from time to time.
Trademarks— of 20202021 13 (2) In the case of an entity that is a convention country but is not a State, part of a State or a territory for whose international relations a State is responsible, a reference in this Act to an application for protection in a country must be read as a reference to an application for protection under the rules of the entity.
(3) In this Act, unless the context otherwise requires, every reference to— (a) (b) (c) the use of a sign in relation to goods is a reference to the use of the sign on, or in physical or other relation to, goods; the use of a sign in relation to services is a reference to the use of the sign in relation to the provision or availability of services; and the use of a sign in relation to goods or services includes a reference to the audible use of the sign in relation to goods or services.
(4) In this Act, unless the context otherwise requires, use, in relation to a trademark, includes— (a) use in a form differing in elements that do not alter the distinctive character of the trademark in the form in which it was registered; (b) applying the trademark to goods or services or to materials for the labelling or packaging of goods or services in Fiji solely for export purposes; (c) the application in Fiji of a trademark to goods or services to be exported from Fiji, and any other act done in Fiji in relation to those goods or services that, if done in relation to goods or services to be sold or otherwise traded in Fiji, would constitute use of a trademark in relation to those goods or services for which the use is material under this Act or at common law; and (d) the use of the trademark by— (i) the owner; or (ii) if the owner is a collective association, a member of the collective association.
(5) References in this Act to use of a trademark by the owner include use by a person other than the owner if that use is authorised by, and subject to, the control of the owner.

(6) The use of the whole of a registered trademark is also a use of any registered component part of a trademark registered in the name of the same owner.

3.
3.

The objectives of this Act are to— Objectives (a) define the scope of rights protected by registered trademarks; (b) specify the procedures for registering trademarks in Fiji; (c) deter counterfeit activity in relation to registered trademarks in Fiji; and (d) ensure that Fiji’s trademark regime takes account of international developments.

Trademarks— of 20202021 14 4.

This Act binds the State.


Act binds the State PART 2—REGISTRABILITY OF TRADEMARKS Division 1—Preliminary Nature of registered trademark 5.—(1) A registered trademark is personal property.

(2) Equities in respect of a registered trademark may be enforced in the same way as equities in respect of any other personal property.
Rights that attach to registered trademarks 6.—(1) The owner of a registered trademark has, in relation to any or all of the goods or services in respect of which the trademark is registered, the rights and remedies provided by this Act and, in particular, has the exclusive right to— (a) use the registered trademark; (b) authorise another person to use the registered trademark; and (c) assign or transmit the registered trademark either in connection with the goodwill of a business or not.
(2) For the purposes of subsection (1)(a), a member of a collective association that owns a collective trademark that is registered in respect of goods or services— (a) has, together with the collective association, the exclusive right to use the trademark in respect of those goods or services; and (b) does not have the right to exclude any other member from using the trademark in respect of goods produced or services provided by the other members.
Additional matters that relate to rights attaching to registered trademarks 7.
Subject to section 9091, the rights referred to in section 6— (a) are subject to any conditions entered on the register in relation to the registered trademark; (b) accrue from the deemed date of registration of the trademark; (c) are conferred in respect of each of the registered trademark’s component parts that are registered as separate trademarks; and (d) are to be exercised by joint owners, if any, of the registered trademark as if they were the rights of a single person.
Rights that attach to application 8.—(1) An applicant may assign or transmit the applicant’s application (whether made before or after the commencement of this Act).

Trademarks— of 20202021 15 (2) An application for the registration of a trademark is personal property.

(3) Equities in respect of an application for the registration of a trademark may be enforced in the same way as equities in respect of any other personal property.
9.—(1) If all the requirements set out in subsection (2) are met, a trademark is registrable under this Act in respect of the following— When trademark registrable (a) particular goods or services within one or more classes; or (b) particular goods and services within one or more classes.
(2) The following requirements must be met— (a) an application for the registration of the trademark must be made in accordance with this Act; (b) all prescribed fees, if any, must be paid in respect of the application; (c) the Commissioner must be satisfied that there are no absolute or relative grounds set out in this Part that would prevent the registration of the trademark.
(3) If a person owns a certification trademark in respect of goods or services, a trademark in respect of goods or services of the kind certified must not be registered in the name of that person.

Additional provisions that relate to registrability of certification trademarks 10.
A certification trademark in respect of goods or services— (a) may be registered in the name, as owner, of the person who certifies the goods or services; but (b) may not be registered in the name of a person who owns a trademark in respect of, or otherwise carries on trade in, goods or in services of the kind certified.

Additional provisions that relate to registrability of collective trademarks 11.
A collective trademark may be registered in the name of a collective association, as owner, in respect of goods produced by its members, services provided by its members, or both.
Division 2—Absolute grounds for not registering trademark Absolute grounds for not registering trademark: general 12.—(1) The Commissioner must not register a sign as a trademark or part of a trademark where the use or registration of the sign or any part of the sign— (a) would be likely to deceive or cause confusion; (b) is contrary to any written law or would otherwise be disentitled to protection in any court; or Trademarks— of 20202021 16 (c) would, in the opinion of the Commissioner, be likely to offend a significant section of the community.
(2) The Commissioner must not register as a trademark or part of a trademark— (a) the use of the word or mark “Fiji” or any word that makes reference to or implies geographic origins or words or marks making reference or implying an approval from the State for which the owner is entitled to disclaim all or any portion of such matter separately or together with other words; and (b) a body corporate’s name or trading name duly registered under the Companies Act 2015, unless the use of the word or mark or the use of a disclaimer on the word or mark is approved by the Minister.
(3) The Minister may approve the use of the word or mark in subsection (1)(2) on such terms and conditions as the Minister deems proper, if— (a) the mark is necessary for the public interest; (b) (c) (d) the mark complies and is in accordance generally with approved marks and brands recognised and licensed in accordance with written laws; the registration of the trademark has the effect of developing Fiji’s economy and technology; the company seeking registration of its company name as a trademark is a government owned entity; or (e) on any other reasonable ground.
(4) The Commissioner must not register a trademark if the application is made in bad faith.

No appeal against decision of Minister 13.

No court, tribunal, commission or adjudicating body has the power or entitlement to hear or determine a claim, complaint or application that purports or purported to challenge the decision of the Minister made under section 12(2), and (3) and (4).
14.—(1) The Commissioner must not register any of the following— Non-distinctive trademark not registrable (a) a sign that is not a trademark; (b) a trademark that has no distinctive character; (c) a trademark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services; Trademarks— of 20202021 17 (d) a trademark that consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade.
(2) The Commissioner must not refuse to register a trademark under subsection (1)(b), (c) or (d) if, before the date of application for registration, as a result of either the use made of it or of any other circumstances, the trademark has acquired a distinctive character.
Relevance of colour to distinctive character of trademark 15.—(1) In determining the distinctive character of a trademark, the Commissioner or the court, as the case may be, must consider whether or not the trademark is, or is to be, limited in whole or in part to one or more specified colours.

(2) A trademark that is, or is to be, registered without limitation of colour is, or will be, registered for all colours.
Trademark containing or consisting of a geographical indication 16.—(1) The registration of a trademark in respect of particular goods (relevant goods) may be opposed on the ground that the trademark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in— (a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or (b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated, if the relevant goods are similar to the designated goods or the use of a trademark in respect of the relevant goods would be likely to deceive or cause confusion.
(2) The registration of a trademark in respect of relevant goods may be opposed on the ground that the trademark contains or consists of a sign that is a geographical indication in respect of a wine or spirit and the trademark will be used in relation to a wine or spirit not originating from the place indicated in the geographical indication.
(3) Subsection (2) applies whether or not the trademark has or is accompanied by, an indication of the true geographical origin of the wine or spirit, as the case may be, or an expression such as “kind”, “type”, “style”, “imitation” or the like and irrespective of the language the geographical indication is expressed in that trademark.
(4) An opposition on a ground referred to in subsections (1) to (3) fails if the application was made in good faith or if the trademark has been used continuously in good faith in the course of trade by the applicant for its registration or the applicant’s predecessor in title, either— (a) before 14 January 1996; or (b) before the geographical indication in question was protected in its country of origin.
Trademarks— of 20202021 18 (5) An opposition on a ground referred to in subsections (1) to (3) fails if the sign has ceased to be protected as a geographical indication for the designated goods in the country in which the designated goods originated, or has fallen into misuse in that country.
Trademark that contains commonly used chemical names must not be registered 1617.—(1) The Commissioner must not register, in respect of a chemical substance or preparation, a trademark that contains the commonly used and accepted name of any single chemical element or single chemical compound.
(2) Subsection (1) does not apply to a word that is used to denote only a brand or make of the element or compound made by the owner or a licensee of the trademark, together with a suitable name or description open to the public use.

Division 3—Relative grounds for not registering trademark Registrability of trademark that contains certain words 1718.
The Commissioner may register a trademark that contains the words “copyright”, “layout design”, “patent”, “patented”, “plant variety right”, “registered”, “registered design” or “trademark”, or any abbreviations of those words, or any similar words.

Registrability of trademark that contains person’s name 1819.
If a person applies for the registration of a sign as a trademark and the sign contains the name or representation of a person, the Commissioner may require the written consent of— (a) that person unless the person died 10 years or more before the making of the application; or (b) the person’s legal representative if— (i) (ii) the person died within 10 years before the making of the application; or the Commissioner thinks the person’s consent cannot for any other reason be obtained.
Registrability of identical or similar trademark 1920.
Subject to section 2021, the Commissioner must not register a trademark (trademark A) in respect of any goods or services if— (a) it is identical to a trademark (trademark B) that belongs to a different owner and that is registered, or has priority under section 2829 or 3031— (i) in respect of the same goods or services; or (ii) in respect of goods or services that are similar to those goods and services, and its use is likely to deceive or cause confusion; or (b) it is similar to a trademark (trademark C) that belongs to a different owner and that is registered, or has priority under section 2829 or 3031, in respect of the same goods or services or goods or services that are similar to those goods or services, and its use is likely to deceive or cause confusion; or Trademarks— of 20202021 19 (c) it is, or an essential element of it is, identical or similar to, or a translation of, a trademark that is well known in Fiji (trademark D), whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of trademark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of trademark D, and would be likely to prejudice the interests of the owner.
2021.
The Commissioner must register trademark A if— Exceptions (a) (b) the owner of trademark B, trademark C or trademark D (as the case may require) consents to the registration of trademark A; or the Commissioner or the court, as the case may be, considers that a case of honest concurrent use exists, or other special circumstances exist, that, in the opinion of the Commissioner or the court, makes it proper for the trademark to be registered subject to any conditions that the Commissioner or the court may impose.
Registrability of trademark that contains representation of flag, etc., generally 2122.—(1) If a person applies for the registration of a sign as a trademark and the sign includes a representation of the flag, armorial bearing, insignia, orders of chivalry, or decorations of any entity, the Commissioner may require that the applicant obtain the written consent of the person who appears to the Commissioner to be entitled to consent to the registration and use of the sign as a trademark.
(2) Subsection (1) does not apply if section 2223 or section 2324 applies.

Registrability of trademark that contains flag, State emblems, etc., of convention country 2223.
The Commissioner must not, without the authorisation of the competent authorities of the country concerned, register a trademark that contains a representation of— (a) the flag of a convention country unless the Commissioner considers that the use of the flag in the manner proposed is permitted without that authorisation; (b) the armorial bearings or any other State emblem of a convention country that is protected under the Paris Convention or the TRIPS Agreement; or (c) an official sign or hallmark— (i) adopted by a convention country; (ii) that indicates control and warranty in relation to goods or services of the same, or similar, kind as those goods or services in relation to which the trademark is to be registered; and (iii) that is protected under the Paris Convention or the TRIPS Agreement.
Trademarks— of 20202021 20 Registrability of trademark that contains armorial bearings, etc., of certain international organisations 2324.—(1) The Commissioner must not, without the authorisation of the international organisation concerned, register a trademark that contains a representation of the armorial bearing, flag, or other emblem, or the abbreviation or name, of an international intergovernmental organisation of which one or more convention countries are members if the armorial bearing, flag, or other emblem, or the abbreviation or name, of the international organisation concerned is protected under the Paris Convention or the TRIPS Agreement.
(2) Notwithstanding subsection (1), the Commissioner may register a trademark if the Commissioner considers that the use of the armorial bearing, flag, or other emblem, or the abbreviation or name, of the international organisation concerned in the manner proposed— (a) (b) is not likely to suggest to the public that a connection exists between the international organisation and the trademark; or is not likely to mislead the public as to the existence of a connection between the user and the international organisation.
When emblems, etc., are protected under Paris Convention or TRIPS Agreement 2425.
For the purposes of sections 2223 and 2324, the State emblems (other than the national flag) of, or the official signs or hallmarks adopted by, a convention country, or the emblems, abbreviations, or names, of an international organisation, as the case may be, are protected under the Paris Convention or the TRIPS Agreement only if, or to the extent that— (a) the country or the organisation concerned has notified Fiji in accordance with Article 6ter(3) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, that it desires to protect the State emblem, official sign, or hallmark, or the emblem, abbreviation, or name, as the case may be; (b) name, as the case may be; (c)(b) the notification remains in force; and (d)(c) Fiji has not objected to it in accordance with Article 6ter(4) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, or any such objection has been withdrawn.
PART 3—PROCESS FOR OBTAINING REGISTRATION OF TRADEMARK AND OTHER MATTERS Division 1—Classification Classification of trademarks 2526.—(1) Goods and services must be classified, for the purpose of registration of a trademark, according to the edition of the Nice Classification in effect at the time of application for the registration of the trademark.
Trademarks— of 20202021 21 (2) Any question arising as to the class within which any goods or services fall must be determined by the Commissioner, whose decision is final.
Division 2—Applications Application: how made 2627.—(1) A person claiming to be the owner of a trademark or series of trademarks may, on payment of the prescribed fee, apply in the prescribed manner for the registration of the trademark or series of trademarks used or proposed to be used in respect of the following— (a) particular goods or services within one or more classes; (b) particular goods and services within one or more classes.
(2) The Commissioner must not register a trademark in respect of all of the goods and services included in a class, or a large variety of goods or services, unless the specification is justified by the use or intended use of the sign.

Joint applications 2728.


Two or more persons may make a joint application if either or any of those persons is entitled to use the trademark only on behalf of both or all of them, or in relation to goods or services with which both or all of them are connected in the course of trade.
Priority of applications for the registration of identical or similar trademarks 2829.—(1) If different persons separately apply for the registration of trademarks that are identical or similar to each other and that are in respect of identical or similar goods or services, the first application received by the Commissioner has priority over all the other applications and may proceed.
(2) If different persons separately apply for the registration of trademarks that are identical or similar to each other and that are in respect of identical or similar goods or services and their applications are received at the same time by the Commissioner— (a) each application has equal priority and may proceed; and (b) the Commissioner must notify each applicant of each other’s application.
(3) For the purposes of subsection (2), 2 or more applications that are received on the same day are to be treated as if they had been received at the same time.

(4) This section is subject to section 3031.

Commissioner’s requirements in relation to applications without priority 2930.
The Commissioner must— (a) inform each applicant whose application does not have priority over all other applications under section 2829(1) or 3031, or does not have equal priority under section 2829(2), of the applicant’s order of priority; and (b) determine, according to its order of priority, each application.

Trademarks— of 20202021 22 Priority of application to which convention country application relates 3031.
—(1) A person who has applied for the registration of a trademark in a convention country, whether before or after it became a convention country, or his or her legal representative or assignee, is entitled to the registration of his or her trademark in priority to other applicants, and the registration has the same date as the date of the application in the convention country if the application is made within 6 months after the date of the convention country application.
(2) Subsection (1) applies only in respect of the first application for the trademark that is made in a convention country by a person and does not apply to any subsequent application for the trademark by that person.

(3) The use of the trademark in Fiji during the 6-month period referred to in subsection (1) does not affect the priority of the application for the registration of the trademark to which the convention country application relates.
3132.—(1) An applicant may, at any time, withdraw an application or limit the Withdrawal, etc., of application specification.

(2) An application may also be altered, at the request of the applicant, by correcting only— (a) the name or address of the applicant; or (b) an error or omission if, in the Commissioner’s opinion, the correction of the error or omission does not materially alter the meaning or scope of the application.

When Commissioner or court may amend application 3233.
Subject to section 3132(2)(b), the Commissioner or the court, as the case may be, may at any time, whether before or after acceptance, correct any error in connection with the application.

3334.

The Commissioner must examine an application in order to determine whether it complies with the requirements of this Act.

Examination of application 3435.

The Commissioner must, subject to any conditions the Commissioner thinks fit, accept an application that complies with the requirements of this Act.
Acceptance of application 3536.

If the Commissioner considers that an application does not comply with the Applicant must be notified of non-complying application requirements of this Act, the Commissioner must— (a) inform the applicant; and (b) give the applicant an opportunity to respond, or to amend the application by correcting only those matters set out in section 3132(2), within the time specified by the Commissioner.
Trademarks— of 20202021 23 Revocation of acceptance of application 3637.—(1) The Commissioner may revoke the acceptance of an application before the trademark to which the application relates is registered if the Commissioner is satisfied that— (a) the application was accepted because of an error or omission made by the Commissioner; or (b) another application that relates to the trademark has priority under section 3031.
(2) If the Commissioner revokes the acceptance of an application— (a) the application is to be treated as if it had not been accepted; and (b) section 3334 again applies to the application.

Rejection of application 3738.

The Commissioner must reject an application if, within the time specified by the Commissioner, the applicant does not satisfy the Commissioner that the applicant has complied with the requirements in this Act for registering a trademark.
Abandonment of application 3839.—(1) Subject to subsection (2), if, within the time specified by the Commissioner, the Commissioner does not receive a response from the applicant to a notification under section 3536, the Commissioner must treat the application as abandoned.
(2) The Commissioner must not treat an application as abandoned under subsection (1) if the application is awaiting the outcome of— (a) opposition proceedings in respect of a prior application; or (b) cancellation, revocation or invalidity proceedings in respect of a prior registration.

Applicant must be notified of grounds, etc., of conditional acceptance or rejection of application 3940.
The Commissioner must, if required to do so by an applicant, state in writing the grounds for the Commissioner’s decision and the materials used in arriving at the decision.

4041.

The Commissioner must ensure that an application that has been accepted is advertised in the prescribed manner, if any.
Advertisement of accepted application Division 3—Opposition to application Opposition to accepted application 4142.—(1) A person may, within the prescribed time and in the prescribed manner, give the Commissioner written notice of opposition to an application.

(2) The notice of opposition must include a statement of the grounds of opposition and any prescribed matters.

Trademarks— of 20202021 24 (3) The Commissioner must send a copy of the notice to the applicant.
Applicant’s counter-statement 4243.—(1) An applicant to whom a notice of opposition has been sent must, within the prescribed time, send to the Commissioner a counter-statement of the grounds on which the applicant relies for his or her application.

(2) If an applicant does not send a counter-statement to the Commissioner within the prescribed time, the applicant is deemed to have abandoned the application.
(3) If an applicant sends a counter-statement to the Commissioner, the Commissioner must send a copy of the counter-statement to every person who gave notice of opposition.

Commissioner’s determination on opposition 4344.

The Commissioner must— (a) hear the parties, if so required; (b) consider the evidence; and (c) determine whether, and subject to what conditions, if any, the trademark is to be registered.
Division 4—Registration of trademark When trademark must be registered 4445.—(1) Subject to subsection (2), the Commissioner must register a trademark if the Commissioner has accepted the application for its registration and— (a) either— (i) no notice of opposition is given in accordance with section 4142; or (ii) all opposition proceedings are withdrawn or decided in favour of allowing registration of the trademark; and (b ) the Commissioner does not intend to revoke the acceptance of the application.
(2) The Commissioner must not register a trademark until 6 months after the date of application for the registration.

4546.
4546.

On the registration of a trademark, the Commissioner must— Commissioner’s requirements on registration (a) enter, on the register, the actual date of registration and the deemed date of registration; (b) issue to the applicant a certificate of registration; and (c) in the case of an application for the registration of a series of trademarks, register the trademarks as a series in one registration.
Trademarks— of 20202021 25 Commissioner may dispense with production of probate or letters of administration in certain cases 4647.—(1) On application in the prescribed manner and payment of any prescribed fees, the Commissioner may, without requiring the production of probate or letters of administration— (a) (b) if the owner of a registered trademark has died, whether before or after the commencement of this Act, register a qualified person as the owner of the trademark; if an applicant has died before the registration of the trademark, whether before or after the commencement of this Act, allow a qualified person to complete the application and may register that person as the owner of the trademark.
(2) Every qualified person who is registered under this section as the owner of a trademark must hold it subject to all existing interests and equities affecting it.

(3) Nothing in section 45 of the Succession, Probate and Administration Act 1970 limits this section.

4748.
4748.

The Commissioner must issue a new certificate of registration to replace an Replacement of certificate of registration existing certificate if— (a) an application for a new certificate of registration has been made in the prescribed manner; and (b) the prescribed fee, if any, has been paid.

Division 5—Additional matters that relate to certification trademarks When rules that govern use of certification trademark must be provided 4849.
Before the Commissioner makes a decision on an application for the registration of a certification trademark, the applicant must provide the Commissioner with draft rules that govern the use of the certification trademark for the Commissioner’s approval.
Consideration of application for the registration of certification trademark 4950.—(1) When the Commissioner or the court deals with an application for the registration of a certification trademark, the Commissioner or the court, as the case may be, must consider— (a) the matters that are relevant to an application under section 2627; (b) whether or not the certification trademark should indicate that it is such a trademark; (c) whether the applicant is competent to certify the goods or services in respect of which the certification trademark is to be registered; (d) whether the draft rules are satisfactory in terms of subsection (2); and (e) whether in all the circumstances the registration applied for would be in the public interest.
Trademarks— of 20202021 26 (2) For the purposes of subsection (1)(d), the draft rules must— (a) contain provisions that relate to when the owner is to— (i) certify goods or services; and (ii) authorise the use of the trademark; and (b) contain, or may contain, any other provisions that the Commissioner requires or permits, as the case may be, to be inserted in them.

Approved rules must be deposited at Fiji Intellectual Property Office 5051.
After the Commissioner has approved the draft rules, the approved rules that govern the use of the registered certification trademark must be deposited at the Fiji Intellectual Property Office for inspection.
Division 6—When registration of trademark ceases Duration of registration 5152.—(1) The duration of the registration of a trademark under this Act is effective for a period of 10 years commencing on the deemed date of registration unless the trademark ceases to be registered before the expiration of that period.

(2) Subsection (1) does not apply to a trademark registered under the Trade-Marks Act 1933.

Renewal of registration 5253.


The registration of a trademark may be renewed in accordance with section 5354 for a further period of 10 years.

Procedure for renewal of registration 5354.—(1) On application by the owner of a registered trademark, the Commissioner must renew the registration of the trademark from the date on which the registration expires (the expiry date).
(2) An application for renewal must be made to the Commissioner— (a) not more than 12 months before, and not more than 6 months after, the expiry date; and (b) in the prescribed manner.
(3) If the owner has not applied for renewal, the Commissioner must send to the owner a notice setting out— (a) (b) the date on which the registration of the trademark will expire; and the conditions, as to the payment of prescribed fees or otherwise, on which the registration will be renewed (the renewal conditions); and (c) that— (i) if the registration is not renewed before the expiry date, the register will be changed to record that the trademark’s status is registered- past expiry date; and Trademarks— of 20202021 27 (ii) if the registration has still not been renewed 6 months after the expiry date, the trademark will be removed from the register.
(4) The notice must be sent in the prescribed manner before the expiry date.

(5) If the registration of a trademark is not renewed before its expiry date, the Commissioner must record on the register that its status is registered-past expiry date, until the registration is renewed or it is removed from the register.
(6) The Commissioner must remove the trademark from the register if— (a) notice has been sent under subsection (3); (b) 6 months have elapsed since the expiry date; and (c) the renewal conditions have not been met.

5455.—(1) A trademark has the status of registered-past expiry date if— Effect of registered-past expiry date status (a) the trademark’s registration expiry date, referred to in section 5354, has passed; but (b) the trademark has not yet been removed from the register.
(2) While the trademark’s status is registered-past expiry date, the trademark— (a) is not a registered trademark for the purposes of Part 4; but (b) is a registered trademark for all other purposes.
(3) If the trademark’s registration is renewed before it is removed from the register under section 5354(6)— (a) (b) the renewed registration takes effect from the expiry date (see section 53(1)); and the trademark is taken to have remained a registered trademark for all purposes from that date as if its status had not changed.

Voluntary cancellation of registration of trademark 5556.
The registration of a trademark may be cancelled by the owner in relation to any or all of the goods or services in respect of which it is registered.

Cancellation or alteration of registration of trademark for breach of condition 5657.
The Commissioner or the court, as the case may be, may, on the application of an aggrieved person or on the Commissioner’s own motion, make an order that cancels or alters the registration of a trademark on the ground of failure to comply with a condition entered on the register in relation to the trademark.

Trademarks— of 20202021 28 Cancellation or alteration of registration of certification trademark 5758.
The Commissioner may, on the application of an aggrieved person or on the Commissioner’s own motion, require that any entry in the register that relates to a certification trademark be cancelled or altered, or that the deposited rules be altered, on any of the following grounds— (a) that the owner is no longer competent to certify any goods or services in respect of which the certification trademark is registered; (b) that the owner has not complied with the deposited rules; (c) that it is not in the public interest for the certification trademark to be registered; (d) that it is in the public interest to alter the deposited rules.
Cancellation or alteration of registration of collective trademark 5859.
The Commissioner may, on the application of an aggrieved person or on the Commissioner’s own motion, require an entry in the register that relates to a collective trademark to be cancelled or altered on any of the following grounds— (a) that the collective association concerned is an unlawful association under any written law; (b) that the collective association concerned no longer exists; or (c) that it is not in the public interest for the collective trademark to be registered.
Application for revocation of registration of trademark 5960.—(1) An aggrieved person may apply to the Commissioner or the court for the revocation of the registration of a trademark on any of the grounds set out in section 6061.

(2) The Commissioner or the court may refuse any application for the revocation of the registration of a trademark that is frivolous or vexatious.
6061.—(1) The grounds for revoking the registration of a trademark are as follows— Grounds for revoking registration of trademark (a) that at no time during a continuous period of 5 years or more was the trademark put to genuine use in the course of trade in Fiji, by the owner for the time being, in relation to goods or services in respect of which it is registered; (b) that, in consequence of acts or inactivity of the owner, the trademark has become a common name in general public use for a product or service in respect of which it is registered; (c) that— (i) the article or substance was formerly manufactured under a patent or the service was formerly a patented process; and Trademarks— of 20202021 29 (ii) a period of 2 years or more has elapsed since the expiry of the patent; and (iii) the word is or the words are the only practicable name or description of the article, substance or service; (d) that, in consequence of the trademark’s use by the owner or with the owner’s consent in relation to the goods or services in respect of which the trademark is registered, the trademark is likely to deceive or confuse the public, for instance as to the nature, quality, or geographical origin of those goods or services.
(2) For the purposes of subsection (1)(a), “continuous period” means a period that commences from a date after the actual date of registration and continues uninterrupted up to the date one month before the application for revocation.

(3) Notwithstanding subsection (1), a trademark may not be revoked for its non-use if its non-use is due to special circumstances that are outside the control of the owner of the trademark.
(4) Subsection (1)(a) does not apply if the owner commences or resumes genuine use of the trademark in the course of trade in Fiji after the expiry of the 5-year period and before the application for revocation is made.
(5) Any commencement or resumption of use after the expiry of the 5-year period but within the period of one month before the making of the application for revocation must be disregarded unless preparation for the commencement or resumption began before the owner became aware that the application may be made.

Onus of proof for revocation of registration of trademark for non-use 6162.
If an owner or a licensee intends to oppose an application for the revocation of the registration of a trademark under section 6061(1)(a), the owner or the licensee must, within the period specified by the Commissioner or the court— (a) provide proof of the use of the trademark if the ground in section 6061(1) (a) forms the basis for the application; or (b) raise the special circumstances that justify the non-use of the trademark if section 6061(3) applies.
6263.—(1) If the Commissioner or the court is satisfied that grounds for revocation of the registration of the trademark exist, the Commissioner or the court must— Revocation of registration of trademark (a) (b) if the grounds exist in respect of all of the goods or services in respect of which the trademark is registered, revoke the registration of the trademark; or if the grounds exist in respect of only some of the goods or services in respect of which the trademark is registered, revoke the registration of the trademark in so far as it relates to those goods or services.
Trademarks— of 20202021 30 (2) If the registration of a trademark is revoked to any extent, the rights of the owner, to that extent, cease on— (a) (b) the date of the application for revocation of the registration of the trademark; or if the Commissioner or the court is satisfied that the grounds for revocation of the registration of the trademark existed at an earlier date, that date.

6364.
6364.

The owner of a trademark may disclaim any right to the exclusive use of any Voluntary disclaimer of trademark by owner part of the trademark.

Disclaimer of trademark as condition of not revoking its registration 6465.
If the grounds specified in section 6061(1)(b) or (c) exist, the Commissioner or the court may, as a condition of the registration of a trademark not being revoked, require the owner of the trademark to disclaim any right to the exclusive use of a word or words in relation to any goods or services.

Disclaimer of trademark for public interest reasons 6566.
If, in determining whether a trademark is to be registered or is to remain on the register, the Commissioner or the court considers that there are public interest reasons for doing so, the Commissioner or the court may require, as a condition of the trademark being on the register, that the owner— (a) disclaims any right to the exclusive use of any part of the trademark; or (b) makes any other disclaimer that the Commissioner or the court considers necessary for the purpose of defining the owner’s rights under the registration.
6667.

A disclaimer on the register affects only those rights of the owner of a trademark that arise out of the registration of the trademark in respect of which the disclaimer is made.

Rights affected by disclaimer Invalidity of registration of trademark 6768.—(1) The Commissioner or the court may, on the application of an aggrieved person, declare that the registration of a trademark is invalid to the extent that the trademark was not registrable under Part 2 at the deemed date of registration.
(2) Notwithstanding subsection (1), the registration of a trademark that has acquired a distinctive character after its registration must not be declared invalid even though the trademark was not registrable under section 14(1)(b), (c) or (d) at the deemed date of its registration.

(3) The Commissioner or the court, as the case may be, may refuse any application for a declaration of invalidity that is frivolous or vexatious.
Trademarks— of 20202021 31 Effect of declaration of invalidity 6869.—(1) If the registration of a trademark is declared invalid to any extent— (a) the trademark is, to that extent, to be treated as if it had not been registered; and (b) the Commissioner may alter the register accordingly.

(2) The validity of any transaction that occurred in respect of a registered trademark before the registration of the trademark was declared invalid is not affected.
Presumption of validity of registration of trademark 6970.

The registration of a trademark is, after the expiration of 57 years from the deemed date of registration, deemed to be valid unless— (a) the registration was obtained by fraud; (b) (c) the trademark should not have been registered on any of the grounds set out in section 14(1) or (2); or the registration may be revoked on any of the grounds set out in section 6061.
7071.—(1) A person who has an interest may apply for the correction of an error or Correction of register omission in the register.

(2) An application for correction of the register may be made either to the Commissioner or the court.

(3) An application for correction of the register may not be made in respect of a matter that affects the validity of the registration of a trademark.
(4) The effect of the correction of the register is that the error or omission concerned is to be treated as if it had never existed unless the Commissioner or the court directs otherwise.

Division 7—Other matters Alteration of registered trademark not permitted 7172.

The owner of a registered trademark may not alter the registered trademark after its actual date of registration.

Alteration of register 7273.
After the actual date of registration of a trademark, the Commissioner may— (a) at the request of the owner of the trademark, allow the owner’s name or address to be altered on the register; (b) at the request of the owner, strike out any goods or services, or classes of goods or services, from those in respect of which the trademark is registered; Trademarks— of 20202021 32 (c) at the request of the owner— (i) enter a memorandum that relates to the trademark, provided that the memorandum does not in any way extend the rights given by the existing registration of the trademark; (ii) alter a memorandum, provided that the alteration does not in any way extend the rights given by the existing registration of the trademark; or (iii) remove a memorandum, provided that the removal does not in any way extend the rights given by the existing registration of the trademark.
Alteration of certification trademark rules 7374.—(1) The Commissioner may, on the application of the owner of a registered certification trademark, alter the rules that govern the use of the certification trademark.

(2) The owner of a registered certification trademark who has applied under subsection (1) must provide the Commissioner with a draft of the altered rules for the Commissioner’s approval.
Advertisement of application for alteration of rules 7475.—(1) The Commissioner must ensure that an application for an alteration of the rules that relate to a registered certification trademark is advertised in the prescribed manner.

(2) The Commissioner must not, without giving the parties an opportunity to be heard, decide the application if, within the specified time, any person notifies the Commissioner that the person opposes the alteration of the rules.
Registration of title to trademark 7576.—(1) A trademark is assignable and transmittable in respect of all or some of the goods or services for which it is registered.

(2) If the title to a trademark is assigned or transmitted after the actual date of registration, either of the following persons may apply to the Commissioner to register the new owner’s title— (a) the person registered as the owner of the trademark; (b) the person to whom the trademark has been assigned or transmitted.
(3) On proof of the new owner’s title, the Commissioner— (a) must register the new owner as the owner of the trademark in relation to the goods or services in respect of which the assignment or transmission has effect; (b) may issue a replacement certificate of registration in the name of the new owner; and Trademarks— of 20202021 33 (c) must cause any assignment, transmission, or other document produced in evidence of title, or a copy of any of those documents, to be filed for public record.
(4) If the title to a trademark is assigned or transmitted before the actual date of registration, either of the following persons may apply to the Commissioner to change the name of the applicant on the application— (a) the applicant for registration of the trademark; (b) the person to whom the trademark has been assigned or transmitted.
(5) On proof of the new owner’s title, the Commissioner must— (a) change the name of the applicant on the application; and (b) cause any assignment, transmission, or other document produced in evidence of title, or a copy of any of those documents, to be filed for public record.

7677.

Nothing in this Act prevents a licensee from assigning or transmitting the right Assigning or transmitting right to use trademark to use a trademark.
PART 4—LEGAL PROCEEDINGS Division 1—Civil proceedings for infringement How Act affects other rights 7778.

Nothing in this Act affects the— (a) rights of action against any person for passing off goods or services as those of another person; or (b) rights relating to fair trading under the Fijian Competition and Consumer Commission Act 2010.
Infringement where identical or similar sign used in course of trade 7879.—(1) A person infringes a registered trademark if the person does not have the right to use the registered trademark and uses in the course of trade a sign— (a) (b) identical to the registered trademark in relation to any goods or services in respect of which the trademark is registered; identical to the registered trademark in relation to any goods or services that are similar to any goods or services in respect of which the trademark is registered, if that use would be likely to deceive or cause confusion; (c) similar to the registered trademark in relation to any goods or services that are identical to or similar to any goods or services in respect of which the trademark is registered, if that use would be likely to deceive or cause confusion; or Trademarks— of 20202021 34 (d) identical or similar to the registered trademark in relation to any goods or services that are not similar to the goods or services in respect of which the trademark is registered where the trademark is well known in Fiji and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.
(2) Subsection (1) applies only if the sign is used in such a manner as to render the use of the sign as likely to be taken as being used as a trademark.

(3) This section is subject to sections 8182 to 8889.
Infringement where non-compliance with certain contractual requirements 7980.—(1) A registered trademark is infringed if— (a) a purchaser or owner of goods and the owner or licensee of the registered trademark have entered into a written contract that requires the purchaser or owner of the goods not to do, in relation to the goods, any of the acts listed in subsection (2); and (b) the owner, for the time being, of the goods— (i) has notice of the contractual requirement; (ii) does or authorises, in the course of trade, or with a view to dealing with the goods in the course of trade, any of those listed acts; (iii) did not purchase the goods for value and in good faith before receiving notice of the contractual requirement; and (iv) is not a successor in title to an owner to whom subparagraph (iii) applies.
(2) The acts referred to in subsection (1) are— (a) the application of the trademark on the goods after their condition, getup, or packaging has been altered in any manner specified in the contract; (b) if the trademark is on the goods— (i) the alteration, part removal, or part obliteration of the trademark; (ii) the application of any other trademark to the goods; (iii) the addition to the goods of any written material that is likely to damage the reputation of the trademark; (c) if the trademark is on the goods, and there is something else on the goods that indicates a connection in the course of trade between the owner or licensee and the goods, the removal or obliteration, whether wholly or partly, of the trademark.
No defence that infringement arose from use of company name 8081.

In an action for infringement of a trademark, it is not a defence that the infringement arose from the use of the name under which a company has been registered.

Trademarks— of 20202021 35 No infringement where trademark used in circumstances not covered by registration 8182.
A registered trademark is not infringed by the use of a trademark in any way or in any circumstances to which, having regard to any condition entered on the register in relation to the trademark, the registration does not extend.

No infringement where more than one identical or similar registered trademarks used 8283.

A registered trademark is not infringed by the use of another registered trademark in relation to any goods or services for which that other trademark is registered.
No infringement for comparative advertising of registered trademark 8384.

A registered trademark is not infringed by the use of the registered trademark for the purposes of comparative advertising, but any such use otherwise than in accordance with honest practices in industrial or commercial matters must be treated as infringing the registered trademark if the use, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

8485.
A person does not infringe a registered trademark if, in accordance with honest practices in industrial or commercial matters, the person uses— No infringement for honest practices (a) the person’s name or the name of the person’s place of business; (b) the name of the person’s predecessor in business or the name of the person’s predecessor’s place of business; (c) a sign to indicate— (i) the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristic of goods or services; or (ii) the time of production of goods or of the rendering of services; or (d) the trademark where reasonably necessary to indicate the intended purpose of the goods (in particular as accessories or spare parts) or services.
No infringement for certain continuous use of unregistered trademark 8586.—(1) A registered trademark (trademark A) is not infringed by the use of an unregistered trademark (trademark B) if— (a) (b) trademark B is identical to or similar to trademark A and is used in relation to any goods or services that are identical to or similar to any goods or services in respect of which trademark A is registered; trademark B was used in relation to those goods or services in the course of trade by the owner or a predecessor in title of the owner before whichever is the earlier of the following dates— (i) the date of application in Fiji for the registration of trademark A; or (ii) the date that the owner, or a predecessor in title, first used trademark A; and Trademarks— of 20202021 36 (c) trademark B has been used continuously in relation to those goods and services in the course of trade by the owner’s predecessors in title (if any) and the owner since that date.
(2) Nothing in this Act entitles the owner of a registered trademark to— (a) interfere with or restrain the use by any person of a trademark identical or similar to it in relation to goods or services in relation to which that person or the owner’s predecessor in title had continuously used that trademark from a date prior to the commencement of this Act if, before that date, the use of that trademark by that person did not infringe the right to the use of the first-mentioned trademark given by the registration; or (b) object, if use is proved, to that person being put on the register for that identical or similar trademark in respect of those goods or services or similar goods or services.
No infringement for use in relation to certain identical or similar goods 8687.

A trademark registered in respect of goods is not infringed by its use in relation to identical or similar goods connected in the course of trade with the owner or licensee if, as to those goods or a bulk of which they form part— (a) the owner or licensee has applied the trademark and has not later removed or obliterated it; or (b) the owner or licensee has consented to the use of the trademark.
Exhaustion of rights conferred by registered trademark 8788.—(1) A registered trademark is not infringed by the use of the trademark, including use for the purpose of advertising, in relation to goods that have been put on the market in any jurisdiction under that trademark under any one or more of the following circumstances— (a) by the owner; (b) with the owner’s express or implied consent; (c) by an associated person of the owner.
(2) For the purposes of subsection (1)(c), a person is an associated person of the owner if— (a) they are in the same group of companies; (b) they are both bodies corporate and they consist of substantially the same members or are directly or indirectly under the control of the same persons; (c) either of them has effective control of the other’s use of the trademark; or (d) a third person has effective control of the use of the trademark by each of them.
Trademarks— of 20202021 37 (3) For the purposes of subsection (2)— (a) “group of companies” includes a holding company and its subsidiaries; and (b) a person has effective control of the use of a trademark if that person may authorise the use of the trademark or has significant influence over how it is used, regardless of how that authorisation or influence arises (for example, whether directly or indirectly and whether by way of proprietary interest, contract, arrangement, understanding, a combination of those things, or otherwise).
When owner or licensee consents to use of registered trademark 8889.—(1) For the purposes of section 86(a)87, the owner or licensee is deemed to have consented to the use of a trademark if a person with whom the owner or licensee has an arrangement that relates to the use of the trademark by the owner or licensee has consented to its use (whether or not that consent is subject to any conditions).
(2) Subsection (1) applies only to the use of a trademark in relation to a medicine that is imported by the State.

No proceedings for infringement of unregistered trademark 8990.

No person may bring proceedings to prevent, or to recover damages for, the infringement of an unregistered trademark.

Time for bringing proceedings for infringement of registered trademark 9091.
The owner of a registered trademark may bring proceedings for infringement of the registered trademark if— (a) in the case of a registered trademark the application for the registration of which has priority under section 3031, the infringement occurred on or after the date of application in Fiji for the registration of the trademark; or (b) in the case of every other registered trademark, the infringement occurred on or after the deemed date of registration of the trademark.
Who may apply for relief for infringement of registered trademark 9192.

The owner of a registered trademark, or, in the case of a collective trademark, one or more members of a collective association acting on its behalf, may apply to the court for relief if the trademark is infringed.

Licensee may request owner of registered trademark to bring proceedings 9293.
Subject to agreement between the parties, a licensee of a registered trademark may request the owner of the registered trademark to bring proceedings to prevent infringement of the registered trademark.

Consequences of owner of registered trademark not bringing proceedings 9394.
If the owner of a registered trademark refuses or neglects to bring proceedings within 2 months after the licensee requested the owner to bring the proceedings, the licensee may commence proceedings for infringement in the licensee’s own name as if the licensee were the owner.

Trademarks— of 20202021 38 9495.


If the licensee commences proceedings under section 9394— Consequences of licensee commencing proceedings (a) the owner becomes a defendant in the proceedings; but (b) the owner is not liable for any costs unless the owner defends the proceedings.
Unjustified proceedings 9596.—(1) If a person brings proceedings alleging an infringement of a registered trademark, the court may, on the application of any person against whom the proceedings are brought— (a) make a declaration that the bringing of proceedings is unjustified; (b) make an order for the payment of damages for any loss suffered by the person against whom the proceedings are brought.
(2) The court must not grant relief under this section if the person who brings the proceedings proves that the acts in respect of which proceedings are brought constituted, or would have constituted if they had been done, an infringement of the trademark concerned.

(3) Nothing in this section makes a legal practitioner liable to any proceedings under this section in respect of any act done in his or her professional capacity on behalf of a client.
Types of relief available for infringement of registered trademark 9697.—(1) If an application is made to the court for relief, the relief that the court may grant includes— (a) an injunction on any terms that the court thinks fit; (b) either damages or an account of profits.
(2) If an application is made to the court for relief, the court may grant such additional damages as the court requires, having regard to all the circumstances and, in particular, to— (a) the flagrancy of the infringement; and (b) any benefit accruing to the defendant by reason of the infringement.

Damages for infringement of collective trademark 9798.
In claiming damages for infringement of a collective trademark, the collective association that owns the collective trademark (or the member or members taking action on behalf of that collective association) may take into account any damage or loss of profits sustained or incurred by any member as a result of the infringement.
9899.—(1) If a person has infringed the exclusive right to use a registered trademark, the court may make an order that requires the person— Order for erasure, etc., of offending sign (a) to erase, remove, or obliterate the offending sign from any infringing goods, infringing material, or infringing object in the person’s possession, custody, or control; or Trademarks— of 20202021 39 (b) if it is not reasonably practicable to erase, remove, or obliterate the offending sign, to destroy the infringing goods, infringing material, or infringing object.
(2) If an order under subsection (1) is not complied with, or it appears to the court likely that the order would not be complied with, the court may order that the infringing goods, infringing material, or infringing object be delivered to any person whom the court may direct— (a) (b) to erase, remove, or obliterate the offending sign from the infringing goods, infringing material, or infringing object; or if it is not reasonably practicable to erase, remove, or obliterate, the offending sign, to destroy the infringing goods, infringing material, or infringing object.
(3) Notwithstanding subsections (1) and (2), if any infringing goods are counterfeit trademark goods, the court must, unless the court is satisfied that there are exceptional circumstances, make an order that requires the person who has infringed to— (a) destroy the goods; or (b) deliver the goods to any person the court may direct, to destroy the goods.
Order for delivery up of infringing goods, infringing material, or infringing object 99100.—(1) The court may order any infringing goods, infringing material, or infringing object in the possession of any person or before the court to be delivered up to the owner of the registered trademark or any other person that the court thinks fit.
(2) No order may be made under this section unless— (a) the court makes an order under section 100101; or (b) it appears to the court that there are grounds for making an order under that section.
(3) A person to whom any infringing goods, infringing material, or infringing object is delivered up under an order made under this section must, if an order under section 100101 is not made, retain them pending— (a) the making of an order under that section; or (b) the decision not to make an order under that section.

(4) Nothing in this section affects any other power of the court.

Order for disposal of infringing goods, infringing material, or infringing object 100101.
An application may be made to the court for an order that the infringing goods, infringing material, or infringing object delivered up under an order made under section 99100 must be— (a) forfeited to the owner of the registered trademark or any other person that the court thinks fit; or Trademarks— of 20202021 40 (b) destroyed or otherwise dealt with as the court thinks fit.

101102.
In considering what order, if any, should be made under section 100101, the Matters to be considered by court court must consider— (a) whether other remedies available for infringement of the exclusive right to use the registered trademark would be adequate to compensate, or protect the interests of— (i) the owner of the registered trademark; (ii) the licensee of the registered trademark; and (b) the need to ensure that no infringing goods, infringing material, or infringing object is disposed of in a manner that would adversely affect— (i) the owner of the registered trademark; (ii) the licensee of the registered trademark.
Directions for service 102103.

The court must issue directions for the service of notice on every person who has an interest in the infringing goods, infringing material, or infringing object to which an application under section 100101 relates.

Rights of persons with interest in infringing goods, infringing material, or infringing object 103104.
Every person who has an interest in the infringing goods, infringing material, or infringing object to which an application under section 100101 relates is entitled to— (a) appear in proceedings for an order under that section, whether or not the person is served with notice; and (b) appeal against any order made, whether or not the person appears in the proceedings.

104105.
104105.

An order made under section 100101 takes effect either— When order under section 100101 takes effect (a) at the end of the period within which notice of an appeal may be given; or (b) on the final determination or abandonment of the proceedings on appeal.

Miscellaneous court order if more than one person interested in infringing goods, infringing material, or infringing object 105106.
If more than one person is interested in the infringing goods, infringing material, or infringing object to which an application under section 100101 relates, the court may— (a) direct that the infringing goods, infringing material, or infringing object be sold, or otherwise dealt with, and the proceeds divided; and (b) make any other order that it thinks fit.

Trademarks— of 20202021 41 Position where no order made under section 100101 106107.
If the court decides that no order should be made under section 100101, the person in whose possession, custody, or control the infringing goods, infringing material, or infringing objects were before being delivered up is entitled to their return.

Division 2—Criminal proceedings When criminal proceedings may be commenced 107108.

No proceeding may be commenced for any offence under sections 109110 to 113114 that was committed before the actual date of registration of the trademark concerned.
Liability of officers of body corporate 108109.
If a body corporate is convicted of an offence under sections 109110 to 113114, every director and every person concerned in the management of the body corporate is guilty of the offence if it is proved— (a) that the act that constituted the offence took place with his or her authority, permission, or consent; and (b) that he or she— (i) knew, or could reasonably be expected to have known, that the offence was to be or was being committed; and (ii) failed to take all reasonable steps to prevent or stop it.
Offence to counterfeit registered trademark 109110.—(1) Every person who, on a commercial scale, with the intention of obtaining a gain for himself or herself or any other person or of causing loss to any person, counterfeits a registered trademark commits an offence.
(2) For the purposes of subsection (1), a person counterfeits a registered trademark if, without the consent of the owner of the registered trademark, the person knowingly— (a) makes a sign that is identical to, or cannot be distinguished in its essential aspects from, the registered trademark so as to be likely to deceive; or (b) falsifies a genuine registered trademark, whether by alteration, addition, effacement, partial removal, or otherwise.
Offence to falsely apply registered trademark to goods or services 110111.—(1) Every person who falsely applies a registered trademark to goods or services commits an offence.
(2) For the purposes of this section and section 113114, a person falsely applies a registered trademark to goods or services if— (a) without the consent of the owner of the registered trademark, the person knowingly applies the trademark or a sign that the person knows is likely to be mistaken for that trademark to the goods or services; and (b) in the case of an application to goods, the person knows the goods are not the genuine goods of the owner or licensee of the registered trademark.
Trademarks— of 20202021 42 (3) For the purposes of this section and section 113114, a trademark is applied to goods or services if— (a) (b) the trademark is used in a sign or an advertisement including a televised advertisement or an invoice, wine list, catalogue, business letter, business paper, price list, or other commercial document; and the goods are delivered, or services provided, as the case may be, to a person in accordance with a request or order made by reference to the trademark as so used.
(4) For the purposes of this section and section 113114, a sign is applied to goods or services if the sign— (a) is applied to the goods themselves; (b) is applied to a covering, label, reel, or thing in or with which the goods are sold or exposed or had in possession for a purpose of trade or manufacture; or (c) is used in a manner likely to lead a person to believe that it refers to, describes, or designates the goods or services.
(5) For the purposes of subsection (4)(b)— “covering” includes a stopper, glass, bottle, vessel, box, capsule, case, frame, or wrapper; and “label” includes a band or ticket.

Offence to make object for making copies of registered trademark, etc.

111112.
111112.

Every person who makes an object specifically designed or adapted for making copies of a registered trademark or a sign that is likely to be mistaken for a trademark with intent that the object be used for, or in the course of, committing an offence under section 109110 or 110111, commits an offence.

Offence to possess object for making copies of registered trademark, etc.

112113.
112113.

Every person who, without lawful authority or excuse— (a) has in the person’s possession, custody, or control, an object specifically designed or adapted for making copies of a registered trademark or a sign that is likely to be mistaken for that trademark; and (b) intends the object to be used for, or in the course of, committing an offence under section 109110 or 110111, commits an offence.

Offence to import or sell, etc., goods with falsely applied registered trademark 113114.
Every person who— (a) imports into Fiji for the purpose of trade or manufacture any goods to which that person knows a registered trademark is falsely applied; Trademarks— of 20202021 43 (b) sells or exposes for sale any goods to which that person knows a registered trademark is falsely applied; or (c) has in the person’s possession for the purpose of trade or manufacture any goods to which that person knows a registered trademark is falsely applied, commits an offence.

114115.
114115.

Every person who is convicted of an offence against— Penalties for offences (a) section 109, 110, 111 or, 112 or 113 is liable on conviction to— (i) a fine not exceeding $10,000 for each of the goods or services to which the offence relates, but not exceeding $150,000 in respect of the same transaction; or (ii) imprisonment for a term not exceeding 5 years; or (b) section 113114 is liable on conviction to— (i) a fine not exceeding $150,000; or (ii) imprisonment for a term not exceeding 5 years.
Order for delivery up in criminal proceedings 115116.
The court before which proceedings are brought against a person for an offence under sections 111112 to 113114 may order that goods or an object be delivered up to the owner of the registered trademark or to any other person that the court may direct if it is satisfied that, at the time of the defendant’s arrest or charge— (a) the defendant had in the defendant’s possession, custody, or control in the course of trade, goods to which— (i) the registered trademark that has been counterfeited has been applied; or (ii) a trademark or sign that is similar to the registered trademark so as to be likely to deceive or cause confusion has been falsely applied; or (b) the defendant had in the defendant’s possession, custody, or control an object specifically designed or adapted for counterfeiting a particular trademark, knowing that the object had been or was to be used to counterfeit trademarks for use in the course of trade.
116117.—(1) An order may— When order for delivery up may be made (a) be made under section 115116 by the court of its own motion or on the application of the prosecution; and (b) be made whether or not the person is convicted of the offence; but (c) not be made if it appears to the court unlikely that an order will be made under section 117118.
Trademarks— of 20202021 44 (2) A person to whom goods or an object is delivered up under an order made under section 115116 must retain the goods or object pending the making of an order or the decision not to make an order under section 117118.

Order for disposal of goods or other object ordered to be delivered up 117118.
An application may be made to the court for an order that the goods or object delivered up under an order made under section 115116 must be— (a) forfeited to the owner of the registered trademark; or (b) destroyed or otherwise dealt with as the court thinks fit.

Matters to be considered by court 118119.


In considering what order, if any, should be made under section 117118, the court must consider— (a) whether other remedies available in proceedings for counterfeiting or falsely using a registered trademark would be adequate to compensate, or protect the interests of, the owner of the registered trademark; and (b) the need to ensure that no infringing goods are disposed of in a manner that would adversely affect the owner of the registered trademark.
Directions for service 119120.

The court must issue directions for the service of notice on every person who has an interest in the goods or other object to which an application under section 117118 relates.

Rights of persons with interest in goods or other object 120121.
Every person who has an interest in the goods or other object to which an application under section 117118 relates is entitled to— (a) appear in proceedings for an order under that section, whether or not that person is served with notice; and (b) appeal against any order made, whether or not that person appears in the proceedings.

121122.
121122.

An order made under section 117118 takes effect either— When order under section 117118 takes effect (a) at the end of the period within which notice of an appeal may be given; or (b) on the final determination or abandonment of the proceedings on appeal, if notice of the appeal is given before the end of that period.

Miscellaneous court orders if more than one person interested in goods or other object 122123.
If more than one person is interested in the goods or other object to which an application under section 117118 relates, the court may— (a) direct that the goods or object be sold, or otherwise dealt with, and the proceeds divided; and Trademarks— of 20202021 45 (b) make any other order as it thinks fit.

Position where no order made under section 117118 123124.
If the court decides that no order should be made under section 117118, the person in whose possession, custody, or control the goods or other object was before being delivered up is entitled to its return.

Division 3—Border protection measures Interpretation of Division 3 124125.
In this Division, unless the context otherwise requires— “clearance” means the completion of formalities necessary to allow goods imported into Fiji to be released into free circulation; “Comptroller” has the meaning given in section 2 of the Customs Act 1986; “importation” means the act of bringing or causing any goods to be brought into Fiji; “infringing goods” means counterfeit trademark goods but excluding infringing goods of a non-commercial nature and intended for the importer’s or consignee’s own personal use contained in personal luggage or sent in small consignments by post; “rights holder” means the natural person or legal entity which, according to law is to be regarded as the owner or rights holder of the particular intellectual property right, its successors in title, or its duly authorised exclusive licensee as well as an individual, a corporation or an association authorised by any of these persons to protect its rights; and “Service” means the Fiji Revenue and Customs Service established under section 3 of the Fiji Revenue and Customs Service Act 1998.
Applications for intervention 125126.

A rights holder may submit an application to the Comptroller in accordance with the procedures and under the conditions set out in this Act, for the suspension of customs clearance of imported goods that are suspected of being infringing goods.

126127.—(1) Any application in terms of section 125126 must— Procedure (a) be in the prescribed form; (b) provide the prescribed information; and (c) be accompanied by the prescribed fee.
(2) The Comptroller must deal with an application within a reasonable period of time and must grant the application if prima facie satisfied on reasonable grounds that— (a) the intellectual property right which relates to the goods subsists; and (b) the applicant is the rights holder of that intellectual property right.
Trademarks— of 20202021 46 (3) If the Comptroller is not satisfied because of a lack of information necessary for adjudication of the application, the Comptroller may defer his or her decision and request in writing that the applicant submit additional information within the requested time.
(4) Where urgent applications for which immediate action is required, and where sufficiently specific information concerning known shipments containing allegedly infringing goods is provided must be assessed immediately, notification to the rights holder must be made as soon as possible and no later than 3 working days.
(5) Unless the rights holder— (a) requests a shorter period; or (b) applies for action in cases of specific shipments, the Service must only take action in relation to an accepted application for a prescribed period.

(6) If the application is rejected, the reasons must be clearly stated.
(7) Provided that an applicant has submitted adequate evidence for the adjudication of the application, an application may not be rejected on the basis that the applicant has not provided all of the prescribed information.
(8) The Comptroller may refuse to suspend the clearance of goods unless the rights holder furnishes to the Service security in the manner and amount that the Service may reasonably require to indemnify itself against any liability that may be incurred pursuant to such suspension, and to cover any expenses that may be incurred in effecting the suspension.
(9) The rights holder must inform the Comptroller in writing when his or her intellectual property right ceases to be valid or if he or she ceases to be the owner of the right for any reason whatsoever, in which event the action period or suspension lapses.

127128.—(1) The Comptroller must suspend clearance of the goods if satisfied that the goods to be imported are infringing goods covered by the grant of the application.
Suspension (2) The Comptroller must immediately inform— (a) the applicant; and (b) provided their identity is known to the Service, the importer, exporter, consignee or the consignor, of the suspension of the clearance of the goods and must state the reasons for such suspension.

128129.—(1) The applicant must institute proceedings leading to a decision on the Proceedings relating to the merits merits of its claim before the court.
Trademarks— of 20202021 47 (2) The goods must be released, if all other conditions for importation have been complied with, unless— (a) the court orders otherwise; or (b) the Comptroller is informed in writing within a period of 10 working days after the applicant was informed of the suspension that proceedings under this section have been initiated.

(3) The time limit in subsection (2)(b) may be extended by the Comptroller in appropriate cases for a further 10 working days.
(4) In the case of perishable goods, the period referred to in subsection (2)(b) is 3 working days, which may not be extended.

(5) In the event of a suspension in terms of an order of court, the periods referred to in subsections (2) to (4) are to be determined by the court, failing which the period must not exceed 20 working days or 31 calendar days, whichever is longer.
(6) The defendant may apply to the Comptroller or the court, pending the determination of the merits, for a review of the suspension and, at the election of the defendant, for the opportunity to be heard, and the Comptroller or the court may, within a reasonable time, modify, revoke or confirm the terms of the suspension.
(7) Without prejudice to the protection of confidential information, the Comptroller must permit the rights holder and the importer sufficient opportunity to inspect the goods subject to suspension in order to substantiate the rights holder’s claim that the goods are infringing goods, and for no other purpose.
(8) Where a positive determination has been made by the court that goods are infringing goods, the Comptroller must at the rights holder’s request inform the rights holder of the names and addresses of the exporter, the importer, the consignee, and the consignor and of the quantity of the goods in question.
(9) Where the court has determined that the goods are not infringing goods, the importer, the consignee and the owner of the goods may be entitled to damages, in an amount determined by the court, caused by the wrongful suspension and detention of the goods concerned.
129130.—(1) The Comptroller may, on its own initiative, suspend the clearance of Ex officio action goods— (a) in respect of which it has acquired prima facie evidence that the goods are infringing goods; or (b) where there are reasonable grounds to suspect that the goods are infringing goods.

(2) Where the Comptroller suspends the clearance of goods under subsection (1), the provisions of sections 127128 and 128129 apply mutatis mutandis.
Trademarks— of 20202021 48 Disposal of infringing goods 130131.—(1) Where a positive determination has been made by the court that goods are infringing goods, the court may, upon application by the rights holder, order that the goods be forfeited and— (a) destroyed; or (b) disposed of by placing them outside free circulation, either by the Service or by the rights holder, under the supervision of the Service.
(2) In granting an order under subsection (1), the court must have regard to the following— (a) disposal must be outside the normal channels of commerce and in such a manner so as to minimise the risks of further infringements, and without detriment to the rights of the rights holder; (b) the rights holder’s proposed manner of destruction or disposal; (c) the effect on the environment of the manner of destruction; and (d) the re-exportation of the counterfeit trademark goods in an unaltered state, or subjecting them to a different customs procedure, other than in exceptional circumstances, must not be permitted.
(3) If the rights holder has provided adequate evidence to the satisfaction of the Comptroller that the goods are infringing goods and— (a) the importer, the exporter, the consignee, the consignor, the owner of the goods, or the declarant who has been served by the Comptroller with a notice of suspension, has been informed about the possibility of confiscation and destruction or disposal outside the channels of commerce by default of the goods and does not oppose the measure within 20 working days after having been served the notice; or (b) if after reasonable efforts by the Comptroller the importer, exporter, consignee, consignor, the owner of the goods, or the declarant has not been identified, the Service may, ex officio and without a court order and with or without the request of the rights holder, forfeit and destroy or dispose of the goods by placing them outside the channels of commerce, and the provisions of subsection (1) are to apply applies mutatis mutandis.
(4) Should the applicant have been granted an extension of the time limit for taking legal action, such extension automatically applies to the opposition procedure referred to in this section.
Trademarks— of 20202021 49 131132.—(1) The Comptroller and the Service are not liable for any action taken or not taken in good faith in respect of the release or suspension of release into free circulation of infringing goods including, in particular— Liability (a) any failure to detect the goods; or (b) the inadvertent release of the goods.
(2) An importer, exporter, consignee, consignor or the owner of the goods may apply to the court for appropriate monetary compensation from the applicant or rights holder for injury caused to them through wrongful detention of goods by the Comptroller or the Service as a result of the actions of the applicant or rights holder.
(3) The owner of the goods, the importer, the exporter, the consignee or the consignor are liable to pay to the Service the costs of storage, destruction or disposal of infringing goods.

(4) If the Service is unable to recover the said costs from any such party, the rights holder is liable to pay said costs and is entitled to recover any costs so paid from any such party.

Division 4—Miscellaneous Application to Commissioner or court 132133.
A person who may apply either to the Commissioner or the court for a determination under this Act— (a) must, if an action concerning the trademark in question is pending, apply to the court; (b) may, in any other case, apply to the Commissioner who may— (i) after hearing the parties, determine the question between them; or (ii) at any stage of the proceedings, refer the application to the court.
Commissioner’s appearance in certain proceedings 133134.—(1) In any legal proceedings in which the relief sought includes alteration or correction of the register, or alteration, revocation, or invalidity of a registered trademark, the Commissioner— (a) has the right to appear and be heard; and (b) must appear if directed by the court.
(2) The Commissioner may, unless otherwise directed by the court, give the court a written statement— (a) of the following particulars that are within the Commissioner’s knowledge— (i) the issues; (ii) the grounds of any decision given by him or her; Trademarks— of 20202021 50 (iii) the practice of the Fiji Intellectual Property Office in similar cases; (iv) any other matters that are relevant to the issues; and (b) that is signed by the Commissioner.
(3) The Commissioner’s written statement forms part of the evidence in the proceedings.

Mode of giving evidence in proceedings before Commissioner 134135.—(1) Subject to any regulations, in any proceedings under this Act before the Commissioner, the evidence must be given by affidavit or statutory declaration in the absence of directions to the contrary.
(2) Notwithstanding subsection (1), the Commissioner may— (a) take oral evidence instead of, or in addition to, evidence by affidavit or declaration; or (b) permit a deponent or declarant to be cross-examined on his or her affidavit or declaration.

(3) Any such statutory declaration may, in the case of appeal, be used before the court instead of evidence by affidavit, and, if so used, has all the incidents and consequences of evidence by affidavit.
(4) In any proceeding under this Act before the Commissioner, the Commissioner may administer oaths to any witness, and may in the prescribed manner require the attendance of any witness and discovery and production of documents.

Evidence of entries, documents, etc.


135136.—(1) A certificate signed by the Commissioner that certifies that any entry that he or she is authorised by or under this Act to make has or has not been made, or that any other thing that he or she is so authorised to do has or has not been done, is prima facie evidence of the certified matters.
(2) A copy of, or extract from, a registered document particulars of which have been entered in any device or facility referred to in section 146155(2) certified to be a true copy or extract by the Commissioner is admissible in evidence in legal proceedings to the same extent as the original document.

(3) A person may, on payment of the prescribed fee, require the Commissioner to give or certify a copy of any entry in the register.
(4) The notification in the prescribed manner of the doing, exercise, or performance of an act, power, function, or duty that the Commissioner is directed, authorised, or empowered to do under this Act or otherwise by law is prima facie evidence that it was lawfully done, exercised, or performed.

Registration is prima facie evidence of validity 136137.
In all legal proceedings that relate to a registered trademark the fact that a person is registered as owner of the trademark is prima facie evidence of the validity of the original registration of the trademark and of all later assignments and transmissions.

Trademarks— of 20202021 51 Appeal against decision of Commissioner that relates to assignments and transmissions 137138.
A document or instrument in respect of which no entry has been made in the register must not be admitted in evidence in a court as proof of the title to a trademark— (a) except for the purposes of an application under section 7071 or of an appeal under section 144145; or (b) unless the court otherwise directs.

Trade usage must be considered 138139.


In an action or proceeding relating to a trademark or trade name, the Commissioner or the court, as the case may be, must admit evidence of— (a) the usages of the trade concerned; and (b) any relevant trademark or trade name or get-up legitimately used by other persons.
Certificate of validity 139140.—(1) In a legal proceeding in which the validity of the registration of a registered trademark comes into question, the court may certify a decision that is in favour of the owner of the trademark.
(2) The owner of a registered trademark who obtains a final order or judgment in his or her favour in a later legal proceeding in which the validity of the registration of the trademark comes into question again is entitled to his or her full costs, charges, and expenses as between solicitor and client if— (a) (b) the court has already certified a decision in favour of the owner under subsection (1); and the court does not certify in the later proceeding that the owner is not entitled to those costs, charges, and expenses.
140141.—(1) In any proceedings before the Commissioner under this Act, the Commissioner may— Costs (a) by order, award to any party costs that the Commissioner considers reasonable; and (b) direct how and by what parties they are to be paid.

(2) An order under subsection (1) may be— (a) entered as a judgment of the court; and (b) with the leave of the court, may be enforced accordingly.
Commissioner or court may require security for costs 141142.—(1) The Commissioner or the court, as the case may be, may require a party to legal proceedings under this Act to give security for the costs of the proceedings if satisfied that— (a) the party does not reside, and does not carry on business, in Fiji; or Trademarks— of 20202021 52 (b) there is reason to believe that the party will be unable to pay the costs of the other party if unsuccessful in the proceedings.
(2) If the party does not give the security required, the Commissioner or the court may treat the proceedings as abandoned by the party and determine the matter accordingly.

No costs on appeal against refusal to certify or to authorise use 142143.
Notwithstanding section 141142, the Commissioner does not have any jurisdiction to award costs to or against any party on an appeal to the Commissioner against a refusal of the owner of a certification trademark to certify goods or services or to authorise the use of the trademark.

143144.

In all court proceedings under this Act, the Commissioner’s costs are at the Costs of Commissioner in proceedings before court discretion of the court.

144145.
144145.

A person who is aggrieved by a decision of the Commissioner under this Act Appeals in relation to Commissioner’s decisions may appeal to the court.

Notice of appeal 145146.

Notice of an appeal under section 136145 must be filed in the court and served on the Commissioner within 20 working days after the day on which the decision appealed against was given.

Hearing of appeal 146147.—(1) On an appeal, the court must hear the parties and the Commissioner.
(2) Appeals must be heard only on the materials stated by the Commissioner unless a party, either in the manner prescribed or by special leave of the court, brings forward further material for the consideration of the court.
(3) In the case of an appeal against the acceptance of an application or the registration of a trademark— (a) no further grounds of objection are permitted by the opponent or the Commissioner, other than those stated by the opponent, except by leave of the court; and (b) if further grounds of objection are permitted, the applicant’s application may be withdrawn without payment of the costs of the opponent on giving notice as prescribed.

Determination of appeals 147148.
In determining an appeal, the court may do any of the following things— (a) confirm, modify, or reverse the Commissioner’s decision or any part of it; (b) exercise any of the powers that could have been exercised by the Commissioner in relation to the matter to which the appeal relates; Trademarks— of 20202021 53 (c) in the case of an appeal against the registration of a trademark, permit the trademark proposed to be registered to be modified in any manner that does not substantially affect its identity, and, in any such case, the trademark as so modified must be advertised in the prescribed manner before being registered.
Provisions pending determination of appeal 148149.

The decision to which an appeal under this Act relates remains in full force pending the determination of the appeal unless the court otherwise orders.

PART 5—ADMINISTRATIVE PROVISIONS AND MISCELLANEOUS Division 1—Commissioner of Trademarks Commissioner of Trademarks 149150.

The Solicitor-General is, for the purposes of this Act, to perform the functions and exercise the powers of the Commissioner of Trademarks.

150151.
The Commissioner has the following functions— Functions of Commissioner (a) examine applications for the registration of trademarks, consider applications for the alteration, renewal, assignment, revocation, declaration of invalidity, and cancellation of registered trademarks and make other decisions relating to the examination and registration of trademarks; (b) provide preliminary advice and search advice to persons who propose to apply for the registration of trademarks; (c) maintain the register of trademarks and carry out other duties and responsibilities relating to the register of trademarks; and (d) perform or exercise other functions, duties, and powers conferred on him or her by this Act and the regulations.
Commissioner may delegate 151152.—(1) The Commissioner may delegate to any person, either generally or particularly, any of the Commissioner’s functions, duties, and powers, except this power of delegation.

(2) A delegation— (a) must be in writing; (b) may be subject to any restrictions and conditions that the Commissioner thinks fit; (c) is revocable at any time, in writing; and (d) does not prevent the performance or exercise of a function, duty, or power by the Commissioner.
Trademarks— of 20202021 54 Liability of Commissioner and others 152153.

The Commissioner or any other person acting on behalf of the Commissioner is not personally liable for any act or omission done in good faith in the performance or intended performance of the Commissioner’s functions, duties, or powers.

Hearing before exercise of Commissioner’s discretion 153154.
The Commissioner must not exercise any of the Commissioner’s discretionary or other powers under this Act or any regulations made under this Act adversely to any person without, if required to do so within the prescribed time, giving the person an opportunity of being to be heard.

Division 2—Register of trademarks Register of trademarks 154155.—(1) The Commissioner must ensure that a register of trademarks registered in Fiji is kept and maintained.
(2) The register may be kept in any manner that the Commissioner thinks fit, including, either wholly or partly, by means of a device or facility— (a) (b) that records or stores information electronically or by other means; and that permits the information so recorded or stored to be readily inspected or reproduced in usable form.

(3) The register is prima facie evidence of any matters required or authorised by or under this Act to be entered in it.

155156.
The register must contain the following— Contents of register (a) all registered trademarks with the names and addresses of their owners; (b) (c) the actual date of registration, the deemed date of registration, and the date of application in Fiji; if the trademark’s status is registered-past the expiry date, as defined in section 5455, a statement to that effect; (d) assignments and transmissions; (e) memoranda referred to in section 7273(c); (f) disclaimers; (g) conditions; (h) any other prescribed matters relating to registered trademarks.
156157.

No notice of any trust may be entered in the register, and the Commissioner No notices of trusts may be entered in register is not affected by any such notice.

Trademarks— of 20202021 55 Search of register 157158.—(1) A person may, on payment of the prescribed fee, search the register— (a) during the hours when the office of the Commissioner is open to the public for the transaction of business on a working day; and (b) at any other time that the Commissioner allows.
(2) A certified copy of an entry in the register must, on payment of the prescribed fee, be given to any person who requires the certified copy.
158159.—(1) Every person who— Offence to make false entry in register (a) makes or causes to be made a false entry in the register or a writing falsely purporting to be a copy of an entry in the register knowing the entry or writing to be false; or (b) produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, commits an offence.
(2) Every person who is convicted of an offence under subsection (1) is liable on conviction to imprisonment for a term not exceeding 2 years.
159160.—(1) Every person who represents that— Offences relating to false representation of trademark (a) a sign, or the whole or a part of a trademark, is a registered trademark when it is not; (b) a registered trademark is registered in respect of any goods or services when it is not; or (c) the registration of a trademark gives an exclusive right to its use when it does not, commits an offence.
(2) Every person who is convicted of an offence under subsection (1) is liable on conviction to a fine not exceeding $1,000.

(3) For the purposes of this section, a reference to— (a) registered is to be read as a reference to registered under this Act; and (b) registration is to be read as a reference to registration in the register.

(4) Subsection (3) does not apply if the relevant reference relates to the registration of a trademark under the law in force in a country outside Fiji.
Trademarks— of 20202021 56 Division 3—Miscellaneous No compensation for diminution in rights attaching to trademark 160161.

No person is entitled to compensation from the State in respect of any diminution in the rights that attach to a trademark that may arise by virtue of the enactment of this Act (for example, the removal of the trademark from the register).
161162.—(1) The Commissioner may— Opening hours of Fiji Intellectual Property Office (a) fix the opening hours for the Fiji Intellectual Property Office; and (b) declare the Fiji Intellectual Property Office closed on any day.

(2) The Commissioner must publicly notify those opening hours and any closure before closing the Fiji Intellectual Property Office.
(3) A thing that must or may be done on a particular day or within a limited period of time may, if that day or the last day of that period is not an opening day of the Fiji Intellectual Property Office, be done on the next opening day.
Closing of Fiji Intellectual Property Office at short notice 162163.—(1) The Commissioner may declare the Fiji Intellectual Property Office closed without giving publication of the closure under section 161162 if— (a) he or she thinks it necessary or desirable because of an emergency or other temporary circumstances; and (b) it is not practicable to make that prior publication.
(2) The Commissioner must, as soon as practicable after closing the Fiji Intellectual Property Office, publicly notify the closure give public notification of the closure.

Recognition of agents 163164.—(1) Any thing that must be done by or to a person under this Act, in relation to a trademark, may be done by or to the person’s expressly authorised agent.

(2) Subsection (1) applies only if the agent is not a class of person prescribed by regulations.
164165.—(1) This section applies to the following applications— Substitution of person other than applicant generally (a) application for cancellation or alteration under section 5657; (b) application for revocation under section 5960; (c) application for a declaration of invalidity under section 6768; (d) application for correction of register under section 7071.
(2) An application referred to in subsection (1) may proceed in the name of any person other than the applicant if— (a) after the applicant has filed the application, the right or interest on which the applicant relied to file the application becomes vested in another person; and Trademarks— of 20202021 57 (b) the other person— (i) notifies the Commissioner in writing that the right or interest is vested in him or her; and (ii) does not withdraw the application.
Substitution of person other than opponent on notice of opposition 165166.

A notice of opposition to an application under section 4142 may proceed in the name of any other person if— (a) after the person has given notice, the right or interest on which that person relied to give notice becomes vested in another person; and (b) that other person— (i) notifies the Commissioner, in writing, that the right or interest is vested in him or her; and (ii) does not withdraw the opposition.
Amendment of documents other than application 166167.
The Commissioner may, at the written request of the person who has made an application, other than an application for the registration of a trademark, or filed a notice or other document for the purposes of this Act, or, at the written request of the person’s agent, amend the application, notice or document— (a) to correct a clerical error or an obvious mistake; or (b) if the Commissioner is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
167168.—(1) Any sum paid to the Commissioner by mistake, or any sum the payment of which is not required by this Act, may be refunded by the Commissioner.

(2) All money that is so refunded must be paid out of public money without further Fees appropriation than this Act.

168169.
168169.

Section 169170 does not apply to— Application of section 169170 (a) notices or other documents served or given in any proceedings in a court; or (b) notices or other documents served or given in accordance with another procedure specified in this Act.
Method of service of notices 169170.—(1) A notice or any other document that is required or authorised by this Act to be served on or given to a person may be served or given by— (a) delivering it to the person or the person’s agent; (b) leaving it at the person’s or the person’s agent’s usual or last known residence or business; Trademarks— of 20202021 58 (c) posting it in a letter addressed to the person or the person’s agent by name at that residence or business address; or (d) emailing it to the person or the person’s agent at an email address that is used by the person or the person’s agent.
(2) If the person is deceased, a notice or other document may be served on or given to the person’s personal representative.

(3) A notice or any other document that is sent to a person by post must be treated as received by the person when it would have been delivered in the ordinary course of post, and, in proving the delivery, it is sufficient to prove that the letter was properly addressed and posted.
(4) In the absence of proof to the contrary, a notice or any other document that is e-mailed to a person must be treated as received by the person at the time when the e-mail becomes capable of being retrieved by the person and, in proving that the document was e-mailed, it is sufficient to prove that the document was properly addressed and sent to the email address.

Regulations 170171.
The Minister may make regulations to prescribe matters that are required or permitted by this Act to be prescribed or are necessary or convenient to be prescribed for carrying out or giving effect to this Act and generally for achieving the purposes of this Act including— (a) prescribing procedures, requirements, and other matters in respect of the amended or substituted classification of goods or services for the purposes of the registration of trademarks under this Act; (b) prescribing procedures, requirements, and other matters in respect of the registration, or renewal or alteration or cancellation, of trademarks under this Act, including— (i) providing for the division of an application for the registration of a trademark into several applications; (ii) providing for the division of a registration of a trademark into several registrations; (iii) providing for the merging of separate applications or registrations; (iv) providing for the registration of a series of trademarks; (c) for the purpose of giving effect in Fiji to the Madrid Protocol, including providing for any of the following— (i) making applications for international registration by way of the Fiji Intellectual Property Office as office of origin; (ii) procedures to be followed where the basic Fijian application for registration ceases to be in force; Trademarks— of 20202021 59 (iii) procedures to be followed where the Fiji Intellectual Property Office receives from the International Bureau, or any person specified in the regulations, a request for extension of protection to Fiji; (iv) the effects of a successful request for extension of protection to Fiji; (v) transforming an application for an international registration, or an international registration, into a national application for registration; (vi) communicating information to the International Bureau; (vii) requiring fees to be paid in respect of applications for international registrations, extensions of protection, and renewals, and prescribing the amounts of those fees; (viii) the
 application of the following provisions to a protected international trademark (Fiji);— (A) section 9596 (unjustified proceedings); (B) Part 4, Division 2 (criminal proceedings); (C) Part 4, Division 3 (border protection measures); (d) prescribing an entity as a convention country for the purposes of this Act giving effect to an international agreement or arrangement to which Fiji is a party or that applies to Fiji; (e) prescribing classes of persons whom the Commissioner may refuse to recognise as agents in respect of proceedings; (f) prescribing procedures, requirements, and other matters in respect of proceedings under this Act, including— (g)(i) providing for the payment of witnesses’ expenses; (h) (ii) imposing fines not exceeding $1,000 for the failure or refusal of a person to attend and give evidence; (i)(g) prescribing procedures, requirements, and other matters in respect of the register and its operation, including matters relating to— (i) (ii) access to the register; the location of and hours of access to the register; (j)(h) prescribing matters in respect of which fees are payable under this Act and the amounts of those fees; (k)(i) prescribing time and extensions of time in respect of any matters under this Act; Trademarks— of 20202021 60 (l)(j) prescribing forms for the purposes of this Act and those regulations may require— (i) the inclusion in, or attachment to, forms of specified information or documents; (ii) forms to be signed by specified persons; (m)(k) prescribing procedures, requirements, and other matters in respect of notices under this Act, including prescribing the matters in respect of which notices are required under this Act; (n)(l) regulating the business of the Fiji Intellectual Property Office in relation to trademarks and all things that are under the direction or control of the Commissioner; and (o)(m) providing for any other matters contemplated by this Act, necessary for its administration, or necessary for giving it full
 effect.
171172.—(1) The Trade-Marks Act 1933 and the Merchandise Marks Act 1933 are Repeal repealed.

(2) The Trade-Marks Rules 1886 and the Merchandise Marks (Detention of Goods) Regulations 1956 are revoked.
172173.—(1) Notwithstanding the repeal of the Trade-Marks Act 1933, the Trade- Marks Act 1933 continues in force and applies in respect of— Transitional (a) an application for the registration of a trade-mark that was received by the Solicitor-General before the commencement of this Act until the trade- mark is registered and any proceedings related to that application, whether or not the proceedings commenced before the commencement of this Act; (b) an application for the alteration, renewal, assignment, or cancellation of a registered trade-mark that was received by the Solicitor-General before the commencement of this Act; and (c) any proceedings that commenced under the Trade-Marks Act 1933 before the commencement of this Act.
(2) Nothing in this Act invalidates the original registration of a trade-mark that, immediately before the commencement of this Act, was valid.

(3) A trademark that, immediately before the commencement of this Act was valid, retains its existing registration period under the Trade-Marks Act 1933 but, at the expiration of that registration period, section 53 applies.
61 Office of the Attorney-General Suvavou House Suva December 2020 TRADEMARKS BILL 2020 –––––––– EXPLANATORY NOTE (This note is not part of the Bill and is intended only to indicate its general effect) 1.0 1.1 1.2 1.3 2.0 2.1 2.2 2.3 BACKGROUND At the moment, the Trade-Marks Act 1933 and Merchandise Marks Act 1933 (‘Acts’) (including their subsidiary legislation) govern the registration and use of trademarks in Fiji.

The Trademarks Bill 2020 (‘Bill’) seeks to repeal the Acts.
The objectives of the Bill are to: (i) define the scope of rights protected by registered trademarks; (ii) specify the procedures for registering trademarks in Fiji; (iii) deter counterfeit activity in relation to registered trademarks in Fiji; and (iv) ensure that Fiji’s trademark regime takes account of international development.

CLAUSES Clause 1 of the Bill provides for the short title and commencement.
If passed by Parliament, the Act will come into force on a date or dates appointed by the Minister by notice in the Gazette.

Clause 2 of the Bill provides for the definitions of the terms used throughout the Bill.

Clause 3 of the Bill outlines the objectives of the Bill.
The Bill is intended to define the scope of rights protected by registered trademarks, specify the procedures for registering trademarks in Fiji, deter counterfeit activity in relation to registered trademarks in Fiji and ensure that Fiji’s trademark regime takes account of international developments.

2.4 Clause 4 of the Bill states that the Bill binds the State.

This means that the provisions of the Bill bind every person in Fiji including the State.
62 2.5 2.6 Clause 5 of the Bill clarifies that a registered trademark is personal property.

Clause 6 of the Bill outlines the rights that are attached to a registered trademark.

The owner of a registered trademark (‘owner’) has the rights and remedies as specified in the Bill as well as the exclusive right to: (i) use the registered trademark; (ii) authorise others to use the registered trademark; and (iii) assign or transmit the registered trademark to another person.
A member of a collective association that owns a registered collective trademark has the exclusive right to use the collective trademark in respect of the goods and services for which the collective trademark is registered, but the member of the collective association has that exclusive right of use together with the collective association to which he or she is a member and cannot exclude any other member of the collective association from using the registered collective trademark.
The terms ‘collective association’ and ‘collective trademark’ are defined in clause 2 of the Bill.
2.7 Clause 7 of the Bill clarifies that: (i) the rights of an owner are subject to conditions attached to the registered trademark as entered on the register of trademarks (‘register’); (ii) the rights of an owner accrue from the deemed date of registration; (iii) if the registered trademark has parts that are registered as separate trademarks the rights of an owner are conferred in respect of each part of the registered trademarks; (iv) if there are joint owners of the registered trademark, the rights are to be exercised by the joint owners.
The term ‘deemed date of registration’ is defined in clause 2 of the Bill.

Clause 8 of the Bill clarifies that an application for the registration of a trademark (‘application’) is personal property.

An applicant may assign or transmit their application regardless of whether the application is made before or after the commencement of the Act.

Clause 9 of the Bill specifies when a trademark is registrable.
A trademark is registrable in respect of particular goods and/or services within one or more classes if certain requirements have been met i.e.

the application is made in accordance with the provisions of the Bill, the prescribed fees for the application are paid and the Commissioner is satisfied that there no grounds that would prevent the registration of the trademark.
2.8 2.9 63 2.10 2.11 2.12 Clause 10 of the Bill specifies that a certification trademark in respect of goods or services may be registered in the name of the person who certifies the goods or services and not in the name of the person who carries on a trade in the goods or services of the kind certified.

The term ‘certification trademark’ is defined in clause 2 of the Bill.
Clause 11 of the Bill specifies that a collective trademark in respect of goods produced or services provided by members of a collective association may be registered in the name of the collective association.

Clause 12 of the Bill sets out the absolute grounds for the Commissioner to not register a sign as a trademark or part of a trademark.
The Commissioner must not register as a trademark or part of a trademark a sign which is: (i) (ii) likely to deceive or cause confusion; contrary to written law or does not have protection in any court of law; or (iii) in the opinion of the Commissioner, likely to offend a significant section of the community.

Also, the Commissioner must not register a trademark if the mark contains the term ‘Fiji’ and a body corporate’s registered name and the application is made in bad faith.
2.13 2.14 Clause 13 of the Bill provides that no court or tribunal may hear a claim that challenges a decision of the Minister in relation to the use of the term ‘Fiji’.

Clause 14 of the Bill sets out the grounds for the Commissioner to not register a trademark.
The Commissioner must not register: (i) a sign that is not a trademark; (ii) a trademark that has no distinctive character; (iii) a trademark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services; (iv) a trademark that consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade.
2.15 Clause 15 of the Bill deals with the relevance of colour in relation to the distinctive character of a trademark.

The Commissioner or the court must consider whether or not the trademark is, or is to be, limited in whole or in part to one or more specified colours.

If a trademark is, or is to be, registered without limitation of colour, then the trademark is, or will be, registered for all colours.
64 2.16 2.17 2.18 Clause 16 of the Bill prohibits the registration, in respect of a chemical substance or preparation, of a trademark that contains the commonly used and accepted name of any single chemical element or single chemical compound.

Clause 17 of the Bill allows the Commissioner to register a trademark that contains the words ‘copyright’, ‘layout design’, ‘patent’, ‘patented’, ‘plant variety right’, ‘registered’, ‘registered design’ or ‘trademark’, or any abbreviations or similar words.
Clause 18 of the Bill deals with the registrability of a sign as a trademark that contains the name or representation of a person.

If a person applies for a sign to be registered as a trademark and the sign contains the name or representation of another person (‘other person’), the Commissioner may require the written consent of the other person unless the other person is deceased and had died 10 years or more before the making of the application.
If the other person is deceased and had died within the 10 years before the making of the application, then the Commissioner may require the written consent of the deceased person’s legal representative.

2.19 Clause 19 of the Bill deals with the registrability of identical or similar trademarks.
The Commissioner must not register a trademark (‘trademark A’) in respect of any goods or services if: (i) (ii) (iii) (iv) (v) trademark A is identical to a trademark that belongs to a different owner (‘trademark B’) and is registered, or has priority, in respect of the same goods or services; trademark A is identical to trademark B and is registered, or has priority, in respect of the same goods or services; trademark A is identical to trademark B and is registered, or has priority, in respect of the goods or services that are similar to those goods or services and the use of trademark A is likely to deceive or cause confusion; trademark A is similar to a trademark that belongs to different owner (‘trademark C’) and is registered, or has priority, in respect of the same goods or services or goods or services that are similar to those goods or services and the use of trademark A is likely to deceive or cause confusion; or trademark A is, or an essential element of trademark A is, identical or similar to, or a translation of, a trademark that is well known in Fiji (‘trademark D’), whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of trademark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of trademark D, and would be likely to prejudice the interests of the owner.
2.20 2.21 2.22 2.23 2.24 2.25 2.26 65 Clause 20 of the Bill outlines the exceptions to the rules in clause 19 of the Bill.

If the owner of trademark B, trademark C or trademark D consents to the registration of trademark A, the Commissioner must register trademark A.
Also, if the Commissioner or the court considers that a case of honest concurrent use exists, or other special circumstances exist, that, in the opinion of the Commissioner or the court, makes it proper for the trademark to be registered subject to any conditions that the Commissioner or the court may impose.

Clause 21 of the Bill deals with the registrability of a trademark that contains a representation of a flag, armorial bearing, insignia, order of chivalry or decoration of any entity.
If a person applies for the registration of these, the Commissioner may require that the applicant obtain the written consent of the person who appears to the Commissioner to be entitled to consent to the registration and use of the sign as a trademark.

However, this clause does not apply if clauses 22 or 23 apply.

Clause 22 of the Bill deals with the registrability of a trademark that contains a representation of a flag, armorial bearing or State emblem, official sign or hallmark of a convention country.
Clause 23 of the Bill deals with the registrability of a trademark that contains a representation of an armorial bearing, flag or other emblem or abbreviation or name of an international intergovernmental organisation.

The authorisation of the international organisation is required for the registration of the trademark.
However, the Commissioner may register a trademark if the Commissioner considers that the use of the armorial bearing, flag or other emblem or abbreviation or name of the international organisation is not likely to suggest that a connection exists between the international organisation and the trademark, or it is not likely to mislead as to the existence of a connection between the user and the international organisation.
Clause 24 of the Bill provides for the extent of the protection of State emblems of, or the official signs or hallmarks adopted by, a convention country, or the emblems, abbreviations, or names, of an international organisation under the Paris Convention or the TRIPS Agreement.

Clause 25 of the Bill provides for the classification of goods and services under the most recent edition of the Nice Classification for the purpose of registration of a trademark.
The Commissioner decides on the class within which any goods or services fall and the Commissioner’s decision is final.

Clause 26 of the Bill specifies who may apply for the registration of a trademark.

A person claiming to be the owner of a trademark or series of trademarks may, with the prescribed fee, apply for the registration of the trademark or series of trademarks used or proposed to be used in respect of particular goods and/or services within one or more classes.
66 2.27 2.28 2.29 2.30 2.31 2.32 2.33 2.34 2.35 Clause 27 of the Bill specifies who may make a joint application for the registration of a trademark.

Two or more persons may make a joint application if one of them or any of them is entitled to use the trademark only on behalf of both or all of them, or in relation to goods or services with which both or all of them are connected in the course of trade.

Clause 28 of the Bill deals with priority applications.
If there are several applications for the registration of trademarks that are identical or similar to each other and that are in respect of identical or similar goods or services, the first application received by the Commissioner has priority over all other applications, subject to clause 30.
Clause 29 of the Bill requires the Commissioner to inform each applicant whose application does not have priority over all other applications or who does not have equal priority, of their order of priority and then determine each application according to their order of priority.

Clause 30 of the Bill deals with priority applications to which convention country applications relate.
A person who has applied for the registration of a trademark in a convention country, or his or her legal representative or assignee, is entitled to the registration of his or her trademark in priority to other applicants, and the registration has the same date as the date of the application in the convention country if the application is made within 6 months after the date of the convention country application.
Clause 31 of the Bill allows an applicant to withdraw an application or limit the specification of an application.

An applicant can also request for the correction of the applicant’s name or address or an error or omission if the Commissioner is of the opinion that the correction does not materially alter the meaning or scope of the application.

Clause 32 of the Bill allows the Commissioner or the court to correct any error in connection with an application.
Clause 33 of the Bill states that an application is to be examined by the Commissioner to determine whether the application complies with the all the requirements of the Bill.

Clause 34 of the Bill states that an application that complies with all the requirements of the Bill is to be accepted by the Commissioner subject to conditions that the Commissioner thinks fit.
Clause 35 of the Bill requires the Commissioner to inform an applicant that the application does not comply with the requirements of the Bill and to also give the applicant an opportunity to respond or to amend the application within the time set by the Commissioner.
2.36 2.37 2.38 2.39 2.40 2.41 2.42 2.43 2.44 67 Clause 36 of the Bill allows the Commissioner to revoke the acceptance of an application before the trademark applied to be registered is registered if the Commissioner is satisfied that the application was accepted because of an error or omission made by the Commissioner or that another application has priority over the application.
If the Commissioner revokes the acceptance of the application, the application is treated as ‘not accepted’ and the Commissioner needs to examine the application to determine whether it complies with the requirements of the Bill.

Clause 37 of the Bill states that the Commissioner must reject an application if the applicant does not satisfy the Commissioner that the applicant has complied with the requirements for registering a trademark within the time set by the Commissioner.
Clause 38 of the Bill provides the grounds for abandonment of an application.

If the Commissioner does not receive a response from the applicant to a notification, the Commissioner must treat the application as abandoned.

Clause 39 of the Bill requires the Commissioner to state the reasons for his or her decision in writing if the applicant requires the Commissioner to do so.

Clause 40 of the Bill ensures that an application that has been accepted is advertised in the prescribed manner.
Clause 41 of the Bill provides for how an accepted application may be opposed.

A person may give written notice of opposition to an accepted application to the Commissioner who must send a copy to the applicant.

The notice must inter alia include a statement of the grounds for opposition.

Clause 42 of the Bill provides for a counter-statement to a notice of opposition.

An applicant to whom a notice of opposition has been sent must send to the Commissioner a counter-statement.
If the applicant sends a counter-statement, the Commissioner must send a copy of the counter-statement to every person who gave notice of opposition.

If the applicant does not send a counter-statement, the applicant is deemed to have abandoned the application.

Clause 43 of the Bill ensures that, in relation to opposition to an accepted application, the Commissioner hears the parties, considers the evidence and determines whether the trademark is to be registered.
Clause 44 of the Bill deals with when a trademark is to be registered.

The Commissioner must register a trademark if the Commissioner has accepted the application and the following have taken place: (i) (ii) no notice of opposition is given; or if notice of opposition is given, all opposition proceedings are withdrawn or decided in favour of the registration; and 68 (iii) the Commissioner does not intend to revoke the acceptance of the application.
2.45 Clause 45 of the Bill states that the Commissioner must, on registration of a trademark: 2.46 (i) enter the actual date of registration and the deemed date of registration on the register; (ii) issue a certificate of registration to the applicant; (iii) in the case of an application for the registration of a series of trademarks, register the trademarks as a series in one registration.
Clause 46 of the Bill allows the Commissioner to register a qualified person as the owner of a trademark if the owner has died, without requiring the production of probate or letters of administration.

Similarly, the Commissioner may allow a qualified person to complete the application for registration of a trademark as the owner of the trademark if the applicant has died before the registration of the trademark.
The qualified person who is registered must hold the registration subject to all existing interest and equities affecting the registration.

The term ‘qualified person’ is defined in clause 2 of the Bill.

2.47 Clause 47 of the Bill deals with the reissuance of a certificate of registration.

2.48 2.49 Clause 48 of the Bill deals with certification trademarks.
An applicant for the registration of a certification trademark must provide the Commissioner with draft rules that govern the use of the certification trademark for the Commissioner’s approval.

Clause 49 of the Bill deals with the consideration of an application for registration of a certification trademark.
When the Commissioner or the court deals with an application for the registration of a certification trademark, the following must be considered: (i) the matters that are relevant to an application; (ii) whether or not the certification trademark should indicate that it is such a trademark; (iii) whether the applicant is competent to certify the goods or services in respect of which the certification trademark is to be registered; (iv) whether the draft rules are satisfactory; and (v) whether in all the circumstances the registration applied for would be in the public interest.
2.50 Clause 50 of the Bill states that the approved rules that govern the use of the registered certification trademark must be deposited at the Fiji Intellectual Property Office (‘FIPO’).

2.51 2.52 2.53 2.54 2.55 2.56 2.57 2.58 2.59 69 Clause 51 of the Bill specifies the duration of a registered trademark.

The duration of the registration of a trademark is effective for a period of 10 years from the deemed date of registration.
This, however, does not apply to a trademark registered under the existing Trade-Marks Act 1933.

Clause 52 of the Bill allows for renewal of the registration of a trademark.

The registration of a trademark may be renewed for a further period of 10 years.

Clause 53 of the Bill provides for notification of the impending expiration of registration of a trademark.
If the owner of a registered trademark applies for the renewal of the registration of a trademark, the Commissioner must renew the registration of the trademark from the date the registration expires.
If the owner has not applied before the expiration of the registration of the trademark, the Commissioner must send a notice of the following to the owner: (i) (ii) (iii) date on which the registration expires; conditions as to the payment of fees or otherwise on which a renewal of registration may be obtained; and removal of the registration, subject to any conditions specified by the Commissioner as to the trademark’s restoration to the register if, at the expiration of the period of 10 years, the conditions have not been complied with.
If, after the expiration of the registration and 6 months, notification has not been complied with and renewal conditions have not been met, the Commissioner must remove the trademark from the register.

Clause 54 of the Bill deals with the status of a trademark that has passed its expiry date but has not been removed from the register.

Clause 55 of the Bill allows for voluntary cancellation of registration of a trademark.

The owner of a registered trademark may cancel the registration.
Clause 56 of the Bill allows the Commissioner or court to, on the application of a person or on its own motion, cancel the registration of a trademark if a condition entered on the register has been breached.

Clause 57 of the Bill allows the Commissioner to require that an entry in the register that relates to a certification trademark be cancelled or altered, or that the deposited rules be altered, on specific grounds.
Clause 58 of the Bill allows the Commissioner to require an entry in the register that relates to a collective trademark be cancelled or altered on specific grounds.

Clause 59 of the Bill allows an aggrieved person to apply to the Commissioner or the court for the revocation of the registration of a trademark.

70 2.60 2.61 2.62 2.63 2.64 2.65 Clause 60 of the Bill sets out the grounds for the revocation of registration of a trademark.
Clause 61 of the Bill states that the owner or a licensee who intends to oppose an application for the revocation of the registration under clause 60(1)(a) has the onus of proof.

Clause 62 of the Bill states that if the grounds for revocation exist in respect of only some of the goods or services in respect of which the trademark is registered, then revocation relates only to those goods or services.
Clause 63 of the Bill allows the owner to disclaim any right to the exclusive use of any part of the trademark.

Clause 64 of the Bill states that if the grounds for revocation in clause 60(1)(b) or (c) exists, the Commissioner or the court may require the owner to disclaim any right to the exclusive use of a word or words in relation any goods or services.
Clause 65 of the Bill allows the Commissioner or the court to require an owner to disclaim any right to the exclusive use of any part of the trademark or to make any other necessary disclaimer if the Commissioner or the court considers it to be in the public interest to do so.

2.66 Clause 66 of the Bill provides the rights affected by a disclaimer.
2.67 Clause 67 of the Bill allows the Commissioner or the court to declare a registration invalid to the extent that the trademark was not registrable under Part 2 at the deemed date of registration.

2.68 Clause 68 of the Bill sets out the effect of an invalid registration.

2.69 Clause 69 of the Bill deals with the presumption of validity of registration.

2.70 2.71 2.72 2.73 2.74 Clause 70 of the Bill provides for the correction of the register.
It allows a person who has interest to apply to the Commissioner or the court for correction of the register.

Clause 71 of the Bill states that the owner may not alter the registered trademark after its actual date of registration.

Clause 72 of the Bill allows the Commissioner to alter the register after the actual date of registration of a trademark.

Clause 73 of the Bill allows the Commissioner to alter the rules that govern the use of a certification trademark.
Clause 74 of the Bill requires the Commissioner to advertise an application for an alteration of the rules that govern a registered certification trademark.

The Commissioner must not decide on an application without having given the parties an opportunity to be heard.

2.75 2.76 2.77 2.78 2.79 2.80 2.81 2.82 2.83 2.84 2.85 2.86 2.87 2.88 2.89 71 Clause 75 of the Bill provides for the registration of the title to a trademark that has been assigned or transmitted.
Clause 76 of the Bill states that nothing in the Bill prevents a licensee from assigning or transmitting the right to use a trademark.

Clause 77 of the Bill states that nothing in the Bill affects the rights of action against any person for passing off goods or services as those of another person or the rights relating to fair trading under the Fijian Competition and Consumer Commission Act 2010.
Clause 78 of the Bill addresses infringement where an identical or similar sign is used in the course of trade.

Clause 79 of the Bill addresses infringement where there is non-compliance with certain contractual requirements.

Clause 80 of the Bill states that it is not a defence that an infringement arose from the use of the name under which a company has been registered.
Clause 81 of the Bill states a registered trademark is not infringed by the use of a trademark in any way or in any circumstances to which the registration does not extend.

Clause 82 of the Bill states that a registered trademark is not infringed by the use of another registered trademark in relation to any goods or services for that other trademark is registered.
Clause 83 of the Bill states that a registered trademark is not infringed by the use of the registered trademark for the purposes of comparative advertising.

Clause 84 of the Bill states that there is, subject to certain conditions, no infringement for honest practices in industrial or commercial matters.

Clause 85 of the Bill states there is no infringement for certain continuous use of unregistered trademark.
Clause 86 of the Bill states that there is no infringement for use in relation to certain identical or similar goods.

Clause 87 of the Bill deals with the exhaustion of the rights conferred by a registered trademark.

Clause 88 of the Bill provides for when the owner or licensee consents to the use of the registered trademark.

Clause 89 of the Bill states that no proceedings may be brought to prevent or to recover damages for infringement of an unregistered trademark.
72 2.90 2.91 2.92 2.93 Clause 90 of the Bill deals with the time for bringing proceedings for the infringement of a registered trademark.

Clause 91 of the Bill deals with who may apply for relief for infringement of registered trademark.

Clause 92 of the Bill states that the licensee may request the owner to bring proceedings to prevent infringement of the registered trademark.
Clause 93 of the Bill states that if the owner refuses or neglects to bring proceedings within 2 months after the request, the licensee may commence proceedings for infringement in the licensee’s own name as if the licensee were the owner.

2.94 Clause 94 of the Bill outlines the consequences if the licensee commences proceedings under clause 93.

2.95 Clause 95 of the Bill deals with unjustified proceedings.
2.96 2.97 2.98 2.99 2.100 Clause 96 of the Bill provides the types of relief available for infringement of a registered trademark.

Clause 97 of the Bill provides that when claiming for damages for the infringement of a collective trademark, the collective association that owns the collective trademark may take into account any damage or loss of profits suffered by any member as a result of the infringement.
Clause 98 of the Bill provides that where a person has infringed the exclusive right to use a registered trademark, the court may order the person to erase or remove the offending sign in the person’s possession or control or destroy the infringing good, infringing material or infringing object.
Clause 98 of the Bill further provides that where an order is not complied with, or likely would not be complied, the court may order that the infringing good, material or object be delivered to a person that the court directs to erase or remove the offending sign or destroy the infringing good, material or object.
Clause 99 of the Bill provides that the court may order that any infringing good, material or object that a person possesses or that is before the court be delivered up to the owner of the registered trademark or any other person the court thinks fit.

An order made under this clause is subject to the making of an order under clause 100 of the Bill.
Clause 100 of the Bill provides that where infringing goods, infringing material or infringing objects have been delivered up under an order under clause 99 of the Bill, an application may be made to the court to order that these infringing goods, material or objects be forfeited to the owner or any other person the court thinks fit or destroyed or dealt with as determined by the court.
2.101 2.102 2.103 2.104 2.105 2.106 2.107 2.108 2.109 2.110 73 Clause 101 of the Bill outlines matters to be considered by the court when considering what order to make under clause 100 of the Bill.

Clause 102 of the Bill requires the court to issue directions for the service of notice on every person who has an interest in the infringing goods, material or object to which an application under clause 100 relates.
Clause 103 of the Bill provides that every person who has an interest in the infringing good, material or object to which an application under clause 100 relates is entitled to appear in proceedings, whether or not the person is served with a notice and appeal against any order made, whether or not the person appears in the proceedings.
Clause 104 of the Bill provides for when an order under clause 100 takes effect, that is, at the end of the period within which notice of appeal may be given or on the final determination or abandonment of proceedings on appeal.
Clause 105 of the Bill provides that where there is more than one interested person to which an application under clause 100 of the Bill relates, the court may direct that the infringing goods, material or object be sold or dealt with, and the proceedings divided and make any other order that the court thinks fit.
Where the court orders that no order should be made under clause 100 of the Bill, the person who possessed or controlled the infringing goods, material or object before being delivered up, is entitled to their return as provided for under clause 106 of the Bill.

Clause 107 of the Bill prohibits any proceeding to commence for any offence under clauses 109 to 113 of the Bill committed before the actual date of registration of a trademark.
Clause 108 of the Bill provides for the liability of directors and every person in management of a body corporate that is guilty of an offence if it is proved that the act that constituted the offence took place with the authority or consent of the director or officer in management and that he or she knew or could reasonably have known that the offence was to be or being committed and did not take reasonable steps to prevent or stop the offence.
Clause 109 of the Bill provides that it is an offence to counterfeit a registered trademark.

Clause 110 of the Bill provides that it is an offence to falsely apply a registered trademark to goods or services.

Clause 111 of the Bill provides that it is an offence to make an object specifically designed or adapted for making copies of a registered trademark or a sign likely to be mistaken for a trademark with the intention that the object be used to commit an offence.
74 2.111 2.112 2.113 2.114 2.115 2.116 2.117 2.118 2.119 2.120 2.121 Clause 112 of the Bill provides that it is an offence to possess or control an object made or adapted specifically for making copies of a registered trademark.

Clause 113 of the Bill provides that it is an offence to import or sell goods with a falsely applied registered trademark.

Clause 114 of the Bill provides for the collective penalties for offences under clauses 109, 110,111, 112 and 113 of the Bill respectively.
Clause 115 of the Bill provides that the court may order that the goods or object be delivered up to the owner of the registered trademark or to any other person the court directs in any proceedings under clauses 111 to 113 of the Bill.

Clause 116 of the Bill provides for when the delivery up of goods may be made that is, under clause 115 by the court of its own motion or on an application of the prosecution, whether or not the person is convicted of the offence.
Clause 116 further provides that an order may not be made if it appears to the court unlikely that an order will be made under clause 117 of the Bill.

Where the person to whom goods or objects are delivered up under an order under clause 115 of the Bill, the person must then retain the goods or objects until the making or not making of, an order under clause 117 of the Bill.
Clause 117 of the Bill provides that an application may be made for an order that the goods or object delivered up under an order made under clause 115 of the Bill be forfeited to the owner of the registered trademark or destroyed or dealt with as the court thinks fit.

Clause 118 of the Bill lists what the court must consider when determining what order should be made.
Clause 119 of the Bill requires the court to issue directions for the service of notice on every person who has an interest in the goods or other object to which an application under clause 117 relates.
Clause 120 of the Bill grants every person who has an interest in the goods or other object applied for under clause 117 of the Bill the right to appear in proceedings for an order whether or not he or she is served with a notice and appeal against any order made, whether or not that person appears in the proceedings.
Clause 121 of the Bill provides for when an order under clause 117 of the Bill would take effect, that is, at the end of the period within which notice of appeal may be given or on the final determination or abandonment of proceedings on appeal.

Clause 122 of the Bill provides that where there is more than one interested person, the court may direct that the goods or other object be sold or dealt with otherwise, and the proceeds divided and make any other order that the court thinks fit.
75 2.122 2.123 2.124 2.125 2.126 2.127 2.128 Clause 123 of the Bill provides that where the court decides no order should be made under clause 117 of the Bill, the person who possessed or controlled the goods or other object before the goods or other object were delivered up, is entitled to its return.

Clause 124 of the Bill provides the definitions for the terms used in Part 4, Division 3, which pertains to border protection measures.
Clause 125 of the Bill empowers a rights holder of a trademark to apply to the Comptroller of the Fiji Revenue and Customs Service (‘Service’) to suspend the customs clearance of infringing goods.

Clause 126 of the Bill sets out the procedure for an application to suspend the customs clearance of infringing goods.

Clause 127 of the Bill empowers the Comptroller to suspend the customs clearance of infringing goods if covered by the grant of the application for suspension.
Clause 128 of the Bill mandates the applicant to institute proceedings on the merits of the applicant’s claim before the court and sets out the procedure for such process.

Clause 129 of the Bill empowers the Comptroller to suspend the customs clearance of goods on his or her own initiative if the Comptroller has prima facie evidence that the goods are infringing goods or there are reasonable grounds to suspect so.

2.129 Clause 130 of the Bill provides for the disposal of infringing goods.
2.130 2.131 2.132 Clause 131 of the Bill indemnifies the Comptroller and the Service from the liability for any action taken or not taken in good faith in respect of the release or suspension of release into free circulation of infringing goods.

Clause 132 of the Bill provides clarity as to where a person may apply to determine matters in question in relation to trademarks.
If a person decides to take action and where concerning a trademark in question that is pending, the person must apply to the court, and in any other case, apply to the Commissioner who may determine the matter or refer the application to the court.
Clause 133 of the Bill provides that where relief sought in a legal proceeding is to have the register altered or corrected, or the registered trademark altered, revoked or invalidated, the Commissioner has the right to appear and be heard, or make an appearance if directed by the court.

If not directed so by the court, the Commissioner may give the court a written and signed statement outlining inter alia the issues, grounds for his or her decision and the practice of FIPO.
76 2.133 2.134 2.135 2.136 2.137 2.138 Clause 134 of the Bill provides that evidence in any proceeding under the Bill must be given by affidavit or statutory declaration in the absence of any directions stating otherwise.

Clause 134 of the Bill also allows the Commissioner to take oral evidence or permit a person to be cross-examined on his or her affidavit or declaration.
Clause 134 of the Bill further empowers the Commissioner to administer oaths to any witness and require any witness to attend such proceedings as well as the discovery and production of documents.

Clause 135 of the Bill provides that a certificate signed by the Commissioner certifying whether an entry has or has not been done as empowered under the Bill is prima facie evidence of certified matters.
The Commissioner is also empowered under clause 135 of the Bill to certify a copy of an entry in the register upon payment of a prescribed fee.

Furthermore, a notification of any action or performance of a function or exercise of a power that the Commissioner is authorised to do, is prima facie evidence of the lawful action, exercise of power or performance of function.
Clause 136 of the Bill states that the fact that a person is registered as owner of a trademark is prima facie evidence of the validity of the original registration of the trademark and of subsequent assignments and transmissions.

Clause 137 of the Bill prohibits any document or instrument that is not entered in the register from being produced as evidence in court as proof of ownership of a trademark except for an application made under clause 70 or 144 of the Bill or where the court directs otherwise.
Clause 138 of the Bill mandates the Commissioner or the court to admit evidence of the usage of the trade concerned and any relevant trademark or trade name or get-up legitimately used by other persons in an action or proceeding relating to a trademark or trade name.

Clause 139 of the Bill provides that where the registration of a registered trademark is questioned in a legal proceeding, the court may certify a decision that is in favour of the owner of the trademark.
Clause 139 of the Bill further provides that where the owner who obtains final order or judgment in his or her favour in a later legal proceeding in which registration of the trademark is questioned, he or she is entitles to full costs, charges and expenses if the court has already certified a decision in his or her favour and the court does not certify that the owner is not entitled to those costs, charges and expenses.
2.139 Clause 140 of the Bill provides for costs of proceedings that are before the Commissioner where the Commissioner may by order, award and direct how costs are to be paid and to whom as the Commissioner considers reasonable.

An order made for costs may be entered as a judgment of the court and with leave of the court, enforced.
77 2.140 2.141 2.142 2.143 2.144 2.145 2.146 2.147 Clause 141 of the Bill provides that where a party to any legal proceedings does not reside or carry on business in Fiji, the Commissioner or the court may require the person to provide security for costs of the proceedings.

Where such an order is not complied with, the Commissioner or the court may treat the proceedings as being abandoned by the person and may proceed to determine the matter.
Clause 142 of the Bill provides that the Commissioner cannot award costs to or against any party on an appeal to the Commissioner against refusal of the owner of a certification trademark to certify goods or services or to authorise the use of the trademark, as the Commissioner does not have jurisdiction despite clause 141 of the Bill.

Clause 143 of the Bill gives the court the discretion to determine the costs of the Commissioner in all court proceedings.
Clause 144 of the Bill allows a person to appeal a Commissioner’s decision to the court if aggrieved by such a decision.

The person is required to file a notice of appeal in court which must be then be served on the Commissioner within 20 working days after the day on which the decision in question was given.

This is provided for under clause 145 of the Bill.


Clause 146 of the Bill provides that a court must hear both the parties and the Commissioner in an appeal on materials stated by the Commissioner unless a party brings further material in the prescribed manner or with the leave of the court.
Where the appeal is against the acceptance of an application or the registration of a trademark, further grounds of objection by the opponent may be permitted only by leave of the court in which case, the applicant’s application may be withdrawn without payment of costs of the opponent on giving notice.
Clause 147 of the Bill provides what the court may do in determining an appeal including the confirmation, modification or reversal of the Commissioner’s decision and any part of it, and the modification of a proposed trademark without substantially affecting its identity.

Clause 148 of the Bill provides that a decision to which an appeal relates remains in force until an appeal is determined or as the court orders otherwise.
Clause 149 of the Bill provides that the Solicitor-General is to perform the functions of the Commissioner for the purposes of the Act.

2.148 Clause 150 of the Bill provides for the functions of the Commissioner.

2.149 Clause 151 of the Bill allows the Commissioner to delegate in writing any of the Commissioner’s functions, duties and powers, except the power to further delegate.
A delegation may be subject to any restriction and condition that the Commissioner thinks and may in writing, be revoked at any time and does not prevent the Commissioner from performing a function or duty, or exercising a power.

78 2.150 2.151 2.152 2.153 2.154 2.155 2.156 2.157 2.158 2.159 Clause 152 of the Bill provides that the Commissioner or any person acting on the Commissioner’s behalf is not liable for any act or omission.
Clause 153 of the Bill ensures that the Commissioner gives a person an opportunity to be heard before exercising any discretionary power under the Bill or regulations adversely to the person.
Clause 154 of the Bill requires the Commissioner to ensure that a register of trademarks registered in Fiji is kept in Fiji and accordingly kept in a manner that the Commissioner thinks fit including by means of a device or facility that records or stores information, and permits such information to be readily inspected or reproduced in usable form.

Clause 154 of the Bill further provides that the register is prima facie evidence of any matter required or authorised by or under the Bill.
Clause 155 of the Bill provides for what the register must contain which includes all registered trademarks with the names and addresses of the owners of these trademarks, the actual date of registration, any assignment, transmissions and conditions, and any other prescribed matter.

Clause 156 of the Bill clarifies that no notice of any trust is to be entered in the register and that he Commissioner is not affected such notice.
Clause 157 of the Bill provides that a person may search the register, upon payment of the prescribed fee when the office of the Commissioner is open to the public for business as well as at any other time that the Commissioner allows.

Clause 157 of the Bill also provides that a person is able to obtain a certified copy of an entry in the register upon payment of the prescribed fee.
Clause 158 of the Bill provides that it is an offence to make a false entry in the register and any person convicted of the offence is liable to imprisonment not exceeding 2 years.

Clause 159 of the Bill provides that it is an offence to falsely represent a trademark registered in Fiji and any person convicted of the offence is liable to a fine not exceeding $1,000.
Clause 160 of the Bill provides that no person is entitled to compensation from the State for the diminution or reduction of rights attached to a trademark that may arise by virtue of the Bill.

Clause 161 of the Bill provides for the opening hours of FIPO as fixed by the Commissioner in addition to when FIPO may be closed as declared by the Commissioner.

The Commissioner accordingly must publicly notify the opening hours and any closure beforehand.
Clause 161 of the Bill further provides that where something must or may be done on a day or time when FIPO is not opened, it may be done on the next opening day of the office.

2.160 2.161 2.162 2.163 2.164 2.165 2.166 2.167 79 Clause 162 of the Bill allows the Commissioner to declare FIPO closed without giving public notice in the case of an emergency or where it is not practicable to make a prior publication.

However, public notification must be given as soon as practicable after closure of the office.
Clause 163 of the Bill allows a person’s authorised agent to do anything required under the Bill on behalf of the person provided the agent is not part of a prescribed class of persons under the Bill.
Clause 164 of the Bill provides for the substitution of persons other than the applicant generally if the right or interest to file the application becomes vested in another person and he or she notifies the Commissioner in writing that the right or interest has vested in him or her, and does not withdraw the application.
Clause 165 of the Bill provides for the substitution of persons on a notice of opposition to an application under clause 41 of the Bill if notice that the right or interest to give notice has been vested in another person and he or she has notified the Commissioner in writing that the right or interest has vested in him or her, and does not withdraw the opposition.
Clause 166 of the Bill allows the Commissioner to amend an application other than an application for registration of a trademark, notice or other document under the Bill at the written request of the person making the application or filing a notice or other document or the person’s agent.

The amendment however would be to correct a clerical error or obvious mistake and where the Commissioner thinks it fair and reasonable to make amendments.
Clause 167 of the Bill provides for fees under the Bill and where any sum is paid to the Commissioner by mistake or not required under the Bill, the sum may be refunded by the Commissioner out of public money without further appropriation than the Bill.

Clause 168 of the Bill provides that clause 169 of the Bill does not apply to those notices or documents served or given in any court proceedings or where there is another specific procedure provided for under the Bill.
Clause 169 of the Bill provides the ways in which a notice or any other document can be served under the Bill.

Clause 169 of the Bill further provides that service by post must be treated as received by the recipient when it would be delivered in the ordinary course of post and service by e-mail must be treated as received by the recipient when the e-mail becomes capable of being received.
Where a person is deceased, the notice or other document may be served on the deceased’s person’s personal representative.

80 2.168 Clause 170 of the Bill empowers the Minister to make regulations to give effect to the provisions of the Bill and prescribe matters that are required or permitted by the Bill to be so prescribed, and to achieve the general purpose of the Bill.

Clause 170 of the Bill also includes a list of what matters may specifically be prescribed by regulations.
2.169 Clause 171 of the Bill repeals the Acts and their subsidiary legislation.

2.170 Clause 172 provides for transitional provisions.

3.0 3.1 MINISTERIAL RESPONSIBILITY The Act comes under the responsibility of the Minister responsible for trademarks.

A. SAYED-KHAIYUM Attorney-General Price: $6.90 A. BAHADUR, SERENDIB INVESTMENT PTE LTD, (Government Printer), Suva, Fiji – 2020 45/A/20—262 Official Printer Since 2019