Chapter 17.07  
2020 Revised  Edition  
  
  
  
  C 
T 
INDUSTRIAL PROPERTY ACT  Industrial Property Act    CAP. 17.07 Arrangement of Sections  
 
 
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 C 
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INDUSTRIAL PROPERTY ACT  
Arrangement of Sections  
Section  
PART I - PRELIMINARY  5 
1 Short title and commencement ................................ ................................ .........  5 
2 Interpretation  ................................ ................................ ................................ .... 5 
PART II - PATENTS  7 
3 Inventions ................................ ................................ ................................ .........  7 
4 Matters excluded fro m patent protection  ................................ .........................  7 
5 Patentable inventions  ................................ ................................ .......................  7 
6 Right to patent; naming of inventor  ................................ ................................ . 8 
7 Applications  ................................ ................................ ................................ ..... 9 
8 Duty of invention;  amendment and division of application  .............................  9 
9 Right of priority under the Paris Convention  ................................ .................  10 
10 Information concerning corresponding foreign applications for patents or 
other titles of protection  ................................ ................................ .................  10 
11 Filing date; examination  ................................ ................................ ................  11 
12 Grant of patent  ................................ ................................ ...............................  12 
13 Rights conferred by patent; exploitation by Government or person thereby 
authorized ................................ ................................ ................................ ....... 12 
14 Duration annual fees  ................................ ................................ ......................  14 
15 Non-voluntary licences  ................................ ................................ ..................  14 
16 Invalidation  ................................ ................................ ................................ .... 15 
16A  Emergency Measures  ................................ ................................ .....................  15 
PART III - UTILITY MODEL CERTIF ICATES  17 
17 Applicability of provisions pertaining to patents  ................................ ...........  17 Arrangement of Sections   CAP. 17.07  Industrial Property Act  
 
 
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 18 Special provisions pertaining to utility model certificates  .............................  17 
19 Conversion of applications of patent or utility model certificates  .................  18 
PART IV - INDUSTRIAL DESIGNS  18 
20 Registrable industrial designs  ................................ ................................ .........  18 
21 Right to registration of industrial designs; naming of creator  ........................  18 
22 Application  ................................ ................................ ................................ ..... 19 
23 Examination; registration of industrial design  ................................ ...............  20 
24 Rights conferred by registration; duration and renewal  ................................ . 20 
25 Invalidation  ................................ ................................ ................................ .... 21 
PART V - MARKS, COLLECTIVE MA RKS AND TRADE NAMES  21 
26 Acquisition of the exclusive right to a mark; registrability  ............................  21 
27 Application for registration  ................................ ................................ ............  22 
28 Examination; opposition; registration of mark  ................................ ...............  23 
29 Rights conferred by registration; duration; renewal  ................................ ....... 24 
30 Invalidation; removal on grounds of non -use ................................ .................  24 
31 Collective mark  ................................ ................................ ..............................  25 
32 Licensing of marks and collective marks  ................................ .......................  25 
33 Trade names  ................................ ................................ ................................ ... 25 
PART VI - ACTS OF UNFAIR COMPE TITION  26 
34 Acts of unfair competition  ................................ ................................ ..............  26 
PART VII - GENERAL PROVISIONS  26 
35 Representation by agent  ................................ ................................ .................  26 
36 Changes in ownership; licence contracts  ................................ ........................  26 
37 Registrar  ................................ ................................ ................................ .........  29 
38 Functions of the Registrar  ................................ ................................ ..............  29 
39 Registers; Gazette  ................................ ................................ ...........................  29 
40 Correction of errors; extension of time  ................................ ..........................  29 
41 Exercise of discretionary power  ................................ ................................ ..... 30 
42 Competence of court  ................................ ................................ ......................  30 
43 Infringement; unlawful acts; offences  ................................ ............................  30 
44 Regulations  ................................ ................................ ................................ ..... 31 
45 Administrative instructions  ................................ ................................ ............  31 
46 Savings and transitional provisions  ................................ ................................  31 
 Section  1  CAP. 17.07  Industrial Property Act  
 
 
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 C 
T 
INDUSTRIAL PROPERTY ACT  
AN ACT TO PROVIDE FO R THE REGISTRATION A ND PROTECTION 
OF PATENTS, UTILITY MODEL CERTIFICATES, INDUSTRIAL 
DESIGNS AND TRADE MA RKS1 
Commencement [2] 
PART I - PRELIMINARY  
1 Short title and commencement  
This Act may be cited as the Industri al Property Act , and shall come into operation 
on a date to be fixed by His Majesty in Council.  
2 Interpretation3 
In this Act, unless the context otherwise requires,  — 
“agent ” means a law practitioner with a valid pract icing licence resident or 
having a place of business in Tonga representing the applicant;  
“collective mark ” means any visible sign designated as such in the 
application for registration and capable of distinguishing the origin or any 
other common character istic, including the quality, of goods or service of 
different enterprises which use the sign under the control of the registered 
owner of the collective mark;  
“Court” means the Supreme Court of Tonga;  Section  2  CAP. 17.07  Industrial Property Act  
 
 
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 “industrial design ” means any composition of lines or colours or any three -
dimensional form, whether or not associated with lines or colours, where such 
composition or form gives a special appearance to a product of industry or 
handicraft and can serve as a pattern for a product of industry or handicraft 
but does not include anything in an industrial design which serves solely to 
obtain a technical result;  
“International Bureau” means the International Bureau of World 
Intellectual Property Organisation as described in the Madrid Protocol;  
 “International Class ification ” means the classification according to the 
Nice Agreement;  
“invention ” means an idea of an inventor which permits in practice the 
solution of a specific problem in the field of technology;  
“Madrid Protocol” means the Protocol relating to the Madr id Agreement 
concerning the International Registration of Marks, adopted in Madrid on 27 
June 1989;  
“marks ” means any visible sign capable of distinguishing the goods or 
services of an enterprise;  
“Minister ” means the Minister responsible for commerce ;4 
“Nice Agreement ” means the Nice Agreement of June 15, 1957, Concerning 
the International Classification of Goods and Services for the Purposes of the 
Registration of Marks as last revised;  
“Paris Convention ” means the Paris Convention for the Protection of 
Industrial Property of March 20, 1883, as last revised;  
“patent ” means the title granted to protect an invention;  
“Patent Cooperation Treaty” means the Patent Cooperation Treaty 
established in Washington on June 1970;  
“patentee ” means a person registered as  grantee or proprietor of a patent;  
“priority date ” means the date of the earlier application that serves as the 
basis for the right of priority provided for in the Paris Convention;  
“registers ” means the registers referred to in section 39(1);  
“Registrar ” means the person holding office in terms of section 37;  
“regulations ” means regulations made under section 45;  
“trade name ” means the name or designation identifying and distinguishing 
an enterprise;  
“utility model certificate ” means a certificate r eferred to in sections 17 to 19;  
“World Trade Organization” means the World Trade  Organisation 
established in Geneva in 1995.  Section  3  CAP. 17.07  Industrial Property Act  
 
 
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 PART II - PATENTS  
3 Inventions  
Subject to section 4, an invention may be or may relate to a product or a process.  
4 Matters  exclud ed from patent protection  
The following, even if they are inventions in terms of section 2, shall be excluded 
from patent protection  — 
(a) discoveries, scientific theories and mathematical methods;  
(b) schemes, rules or methods for doing business, performi ng purely 
mental acts or playing games;  
(c) methods for treatment of the human or animal body by surgery or 
therapy, as well as diagnostic methods practised on the human or 
animal body. This provision shall not apply to products for use in any 
of those met hods.  
5 Patentable inventions  
(1) An invention is patentable if it is new, involves an inventive step and is 
industrially applicable.  
(2) An invention is new if it is not anticipated by prior art.  
(3) Prior art shall consist of everything disclosed to the public  — 
(a) anywhere in the world, by publication in tangible form; or  
(b) in Tonga, by oral disclosure, by use or in any other way,  
prior to the filing, or where applicable, the priority date, of the application 
claiming the invention.  
(4) For the purpos es of subsection (3), disclosure to the public of the invention 
shall not be taken into consideration if it occurred within 12 months preceding 
the filing date or, where applicable, the priority date, of the application, and if 
it was by reason or in conse quence of acts committed by the applicant or his 
predecessor in title or of an abuse committed by a third party with regard to 
the applicant or his predecessor in title.  
(5) An invention shall be considered as involving an inventive step if, having 
regard to the prior art relevant to the application claiming the invention, it 
would not have been obvious to a person having ordinary skill in the art.  
(6) An invention shall be considered industrially applicable if it can be made or 
used in any kind of industry . Section  6  CAP. 17.07  Industrial Property Act  
 
 
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 (7) Industry shall be understood in its broadest sense; it shall include handicraft, 
agriculture, fishery, pharmaceuticals and services.  
(8) Inventions that are contrary to public order or morality shall not be patentable.  
6 Right to patent; naming of in ventor  
(1) The right to a patent shall belong to the inventor.  
(2) If two or more persons have jointly made an invention, the right to the patent 
shall belong to them jointly.  
(3) If and to the extent to which two or more persons have made the same 
invention independently of each other, the person whose application has the 
earliest filing date or, if priority is claimed, the earliest validly claimed 
priority date and leads to the grant of a patent shall have the right to the 
patent , as long as the sa id application is not withdrawn, abandoned or 
rejected .5 
(4) The right to a patent may be assigned, or may be transferred by succession , 
and the owner of a patent shall have the right to conclude licencing contracts .6 
(5) Where an invention is made in exec ution of an employment contract, the right 
to the patent shall belong, in the absence of contractual provisions to the 
contrary, to the employer.  
(6) When an invention is made in execution of a commission or an employment 
contract, the right to the patent for that invention shall belong, in the absence 
of contractual provisions to the contrary, to the person having commissioned 
the work or the employer, as the case may be.  
(7) When the invention has an economic value much greater than the parties 
could have  reasonably foreseen at the time of concluding the contract, the 
inventor shall have a right to equitable remuneration, which shall be 
determined by the Court in the absence of agreement between the parties.  
(8) Notwithstanding subsections (6) and (7), whe n an employee, whose 
employment contract does not require him to engage in inventive activity, 
makes, in the field of activities of his employer, an invention by using data or 
means available to him through his employment, the right to the patent for 
that invention shall belong, in the absence of contractual provisions to the 
contrary, to the employer:  
Provided that the employee shall have a right to equitable remuneration taking 
into account his salary, the economic value of the invention and any benefit 
derived from the invention by the employer. In the absence of agreement 
between the parties, the remuneration shall be determined by the Court. 
(9) Any contractual provision which is less favourable to the inventor than the 
provisions of this section shall be null and void.  Section  7  CAP. 17.07  Industrial Property Act  
 
 
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 (10) The inventor shall be named as such in the patent, unless in a special written 
declaration addressed to the Registrar he indicates that he wishes not to be 
named. Any promise or undertaking by the inventor made to any person to the 
effect that he will make such a declaration shall be without legal effect.  
7 Applications  
(1) An application for a patent shall be filed with the Registrar and shall contain a 
request, a description, one or more claims, one or more drawings, where 
required,  and an abstract. It shall be accompanied by the payment of the 
prescribed application fee.  
(2) The request shall contain a petition, to  the effect that a patent be granted, the 
name of the applicant and other prescribed data concerning the applicant, the 
inventor and the agent, if any, and the title of the invention.  
(3) Where the applicant is not the inventor, the request shall be accompanied by a 
statement justifying the applicant ’s right to the patent.  
(4) The description shall disclose the invention in  a manner sufficiently clear and 
complete for the invention to be evaluated, and to be carried out by a person 
having ordinary skill in the art, and shall, in particular, indicate the best mode 
for carrying out the invention known to the applicant at the f iling date, or 
where priority is claimed, at the priority date of the application .7 
(5) The claim or claims shall determine the scope of the protection; the 
description and the drawings may be used to interpret the claims.  
(6) Claims shall be clear and con cise and shall be fully supported by the 
description.  
(7) Drawings shall be required when they are necessary for the understanding of 
the invention.  
(8) The abstract shall merely serve the purpose of technical information; in 
particular, it shall not be ta ken into account for the purpose of interpreting the 
scope of the protection.  
(9) The applicant may withdraw the application at any time before grant.  
8 Duty of invention; amendment and division of application  
(1) The application shall relate to one invent ion only or to a group of invention s 
so linked as to form a single general inventive concept.  
(2) The applicant may at any time before grant, amend the application, but the 
amendment shall not go beyond the disclosure in the initial application.  
(3) The ap plicant may, up to the time when the application is in order for grant, 
divide the application into two or more applications namely, divisional Section  9  CAP. 17.07  Industrial Property Act  
 
 
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 applications, but each divisional application shall not go beyond the 
disclosure in the initial application.  
(4) The divisional application shall be entitled to the filing date and, where 
applicable, the priority date of the initial application.  
(5) The fact that a patent has been granted on an application that did not comply 
with the requirement of unity of inventi on under subsection (1) shall not be a 
ground for the invalidation of the patent.  
9 Right of priority under the Paris Convention  
(1) The application may contain a declaration claiming the priority, as provided 
for in the Paris Convention, of one or more earlier national, regional or 
international applications filed by the applicant or his predecessor in title in or 
for any State party to the said Convention , or any member of the World Trade 
Organisation .8 
(2) Where the application contains a declaration u nder subsection (1), the 
Registrar may require that the applicant furnish, within the prescribed time 
limit, a copy of the earlier application certified as correct by the office with 
which it was filed.  
(3) The effect of the said declaration shall be as pr ovided in the Paris Convention.  
(4) If the Registrar finds that the requirement under this section and the 
regulations pertaining thereto have not been fulfilled, the said declaration 
shall be considered not to have been made.  
10 Information concerning cor responding foreign applications for patents 
or other titles of protection  
(1) The applicant shall, at the request of the Registrar, furnish him with the date 
and number of any application for a patent or other titles of protection filed by 
him abroad (here in referred to as “foreign applications”), relating to the same 
or essentially the same invention as that claimed in the application filed with 
the Registrar.  
(2) The applicant shall, at the request of the Registrar, furnish him with the 
following document s relating to one of the foreign applications referred to in 
subsection (1)  — 
(a) a copy of the patent or other title of protection granted on the basis of 
the foreign application;  
(b) a copy of any communication received by the applicant concerning the 
results of any search or examination carried out in respect of the foreign 
application;  
(c) a copy of any final decision rejecting the foreign application or refusing 
the grant requested in the foreign application; and  Section  11  CAP. 17.07  Industrial Property Act  
 
 
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 (d) a copy of any final decision invali dating the patent or other title of 
protection granted on the basis of the foreign application referred to in 
subsection (1).  
11 Filing date; examination  
(1) The Registrar shall accord as the filing date, the date of receipt of the 
application, provided th at, at the time of receipt, the application fee is paid 
and the application contains  — 
(a) the name of the applicant;  
(b) a part which on the face of it appears to be a description;  
(c) a part which on the face of it appears to be a claim or claims;  
(d) an express or implicit indication that the grant of a patent is sought.  
(2) If the Registrar finds that the application did not, at the time of receipt, fulfil 
the requirements referred to in subsection (1), he shall invite the applicant to 
file the required  correction and shall accord as the filing date the date of 
receipt of the required correction, but if no correction is made, the application 
shall be treated as if it had not been filed.  
(3) Where the application refers to drawings which in fact are not i ncluded in the 
application, the Registrar shall invite the applicant to furnish the missing 
drawings.  
(4) If the applicant complies with the invitation referred to in subsection (3), the 
Registrar shall accord, as the filing date, the date of receipt of th e missing 
drawings. Otherwise the Registrar shall accord, as the filing date, the date of 
receipt of the application and shall treat any references to the said drawings as 
non-existent.  
(5) After according a filing date, the Registrar shall examine whether  the 
application complies with the requirements of section 7(1), (2), (3) and (4) , 
and the Regulations relating thereto and whether information requested under 
Section 10, if any, has been provided .9 
(6) Where the Registrar is of the opinion that the appli cation complies with  the 
requirements under subsection (5), the Registrar shall make a  decision as to 
whether the requirements of sections 3, 4, 5, 7(4), 7(5),  7(6), 7(7), and 8, and 
the Regulations, cause the application to be  examined.10 
(7) The Registrar  shall take into account, for the purpose of subsection (6) - 
(a) the result of any international search report and international  
preliminary examination report established under the Patent  
Cooperation Treaty in relation to the application;  
(b) a search and examination report submitted under section 10(2)(c)  
relating to, or a final decision submitted under section 10(2)(c) on  the 
refusal to grant a patent on a corresponding foreign application;  and Section  12  CAP. 17.07  Industrial Property Act  
 
 
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 (c) a search and examination report which was carried out  upon his  request 
by an external search and examination authority.11 
(8) 
(a) Any international application filed or received by the  Registrar in 
which Tonga is designated for the purposes of  obtaining a patent under 
this Act shall be treated as an applicati on filed under this Act.  
(b) The registrar shall examine and process all international  applications 
referred to in paragraph (a) and the provisions of  the Patent 
Cooperation Treaty and the Regulations relating  thereto.  
(c) In the event of conflict between the provision of this Act and its  
Regulations and the provisions of the Patent Cooperation Treaty,  the 
former shall prevail unless the application of these provisions  
contravene the underlying principles of the latter, in which case  the 
latter shall prevai l, according to prescribed procedures.12 
12 Grant of patent  
(1) Where the Registrar finds that the conditions referred to in section 11(5)  and 
(6) are fulfilled, he shall grant the patent. Otherwise, he shall reject the 
application and notify the applicant of his decision.  
(2) When he grants a patent, the Registrar shall  — 
(a) publish the fact that he has granted the patent;  
(b) issue to the applicant a certificate of the grant of the patent and a copy 
of the patent;  
(c) record the patent; and  
(d) make avail able copies of the patent to the public, on payment of the 
prescribed fee.  
(3) The Registrar shall, whenever possible, make a final decision regarding  the 
application not later than two years after the commencement of the  
examination referred to in section  11.13 
(4) The Registrar shall, upon request of the owner of the patent, make  changes in 
the text or drawings of the patent in order to limit the extent  of the protection 
conferred thereby, provided that the change would not  result in the disclosure 
contained in the patent going beyond the  disclosure contained in the initial 
application on the basis of which the  patent was granted.14 
13 Rights conferred by patent; exploitation by Government or person 
thereby authorized  
(1) Exploitation in respect of a patented invention means any of the following 
acts — Section  13  CAP. 17.07  Industrial Property Act  
 
 
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 (a) when the patent has been granted in respect of a product, the making, 
importing, exporting, offering for sale, setting and using the products or 
stocking such products for the purposes of offering fo r sale;  
(b) when the patent has been granted in respect of a process, using the 
process or doing any of the acts referred to in sub -paragraph (a) in 
respect of a product obtained directly by means of the process.  
(2) Subject to subsections (4) and (5 ) and section 15, the exploitation of the 
patented invention in Tonga by persons other than the owner of the patent 
shall require the patentee ’s permission.  
(3) The patentee shall, in addition to any other rights, remedies or actions 
available to him, have the r ight, subject to subsections (4) and (5) and section 
15 and 16A , to institute court proceedings against any person who exploits the 
patent without his permission, or who performs acts which may likely infringe 
the patented invention.  
(4)15 The rights under the patent shall not extend  — 
(a) to acts in respect of articles which have been put on the market in 
Tonga or in any other country by the patentee or with his consent;  
(b) to the use of articles on aircraft, land vehicles, or vessels of other 
countries wh ich temporarily or accidentally enter the airspace, territory 
or waters of Tonga;  
(c) to acts done only for experimental purposes relating to a patented 
invention;  
(d) to acts performed by any person who in good faith, before the filing or, 
where priority is claimed, the priority date of the application on which 
the patent is granted, was using the invention in Tonga or was making 
effective and serious preparations in Tonga for such use, to the extent 
that such acts do not differ in nature or purpose from t he actual or 
envisaged prior use; this right may be transferred or devolve only 
together with the enterprise or business, or with that part of the 
enterprise or business, in which the use or preparations for use have 
been made.  
(5)16 
(a) It is an infringeme nt of a patent for any person to make, construct, use 
or sell the patent invention solely for use reasonably related to the 
development and submission of information required under any law in 
Tonga that regulates the manufacture, construction, use or sale of any 
product.  
(b) The right of prior user referred to in subsection 4(d) may be transferred 
or devolve only together with the enterprise or business, or with that 
part of the enterprise or business, in which the use have been made.  Section  14  CAP. 17.07  Industrial Property Act  
 
 
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 14 Duration annual fee s 
(1) Subject to subsection (2), a patent shall expire 20 years after the filing date of 
the application for the patent.  
(2) In order to maintain the patent or patent application, an annual fee shall be 
paid in advance to the Registrar for each year, start ing one year after the filing 
date of the application for the grant of the patent. A period of grace of 6 
months shall be allowed for the late payment of the annual fee on payment of 
the prescribed surcharge. If an annual fee is not paid in accordance with  the 
provisions of this subsection, the patent application shall be deemed to have 
been withdrawn or the patent shall lapse.  
15 Non-voluntary licences  
(1) On the request of any person who proves his ability to work a patented 
invention in Tonga made to the  Registrar after the expiration of a period of 4 
years from the date of filing of the patent application or 3 years from the date 
of the grant of the patent, whichever period expires last, the Registrar may 
grant a non -voluntary licence if the patented inv ention is not worked or is 
insufficiently worked locally or by importation in Tonga.17 
(2) Notwithstanding subsection (1), a non -voluntary licence shall not be granted 
if the patentee satisfies the Registrar that circumstances exist which justify the 
non-working or insufficient working of the patented invention in Tonga. 
Importation shall not constitute such a circumstance.  
(3) The beneficiary of the non -voluntary licence shall have the right to exploit, 
including importation , the patented invention in Tonga  according to the terms 
set down in the decision granting the licence and, shall commence the 
working of the patented invention in Tonga within the time limit fixed in the 
said decision and, thereafter, shall work the patented invention sufficiently in 
Tonga, subject to the payment of an equitable remuneration therefore as 
determined in the said decision.18 
(4) The grant of the non -voluntary licence shall fix — 
(a) the scope and function of the licence;  
(b) the time limit which the licencee shall begin to exploit the patented 
invention; and  
(c) the amount of the adequate remuneration to be paid to the owner of the 
patent and the conditions of payment.19 
(5)  If the invention claimed in a patent (later patent) cannot be exploited in the 
country without infrin ging a patent granted on the basis of an application 
benefiting from an earlier filing or , where appropriate, priority date, the 
Registrar upon the request of the owner of the later patent, may issue a non -
voluntary licence to the extent necessary to avoi d infringement of the earlier 
patent.20 Section  16  CAP. 17.07  Industrial Property Act  
 
 
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 (6) Where a non -voluntary licence is issued under subsection (5) the Registrar 
upon the request of the owner of the earlier patent, shall issue a non -voluntary 
licence in respect of the later patent.21 
(7) In the case for a request for the issuance of a non -voluntary licence under 
subsections (5) and (6), subsection (3) shall apply mutatis mutandis with the 
proviso that no time limit needs to be fixed.22 
(8) In the case of a non -voluntary licence issued under subsection (5), the transfer 
may be made only with the later patent, or, in the case of non -voluntary 
licence issued under subsection (6), only with the earlier patent.23 
(9) The request for the issuance of a non -voluntary licence shall be subject to 
payment of the pr escribed fee.24 
16 Invalidation  
(1) Any interested person may request the Court to invalidate a patent.  
(2) The Court shall invalidate the patent if the person requesting the invalidation 
proves that any of the requirements of sections 3, 4, 5, and 7(4), 7( 5), 7(6) and 
7(7) are not fulfilled or if the patentee is not the inventor or his successor in 
title. 
(3) Any invalidated patent, or claim or part of a claim, shall be regarded as null 
and void ab initio . 
(4) The final decision of the Court shall be notifi ed to the Registrar who shall 
record it and publish the decision as soon as possible.  
16A Emergency Measures25 
(1) The Minster may decide that, even without the agreement of the  owner of the 
patent, a Government agency or a third person  designated by him may exploit  
a patented invention where the – 
(a)  public interest, in particular, national security, nutrition,  health or the 
development of other vital sectors of the  national economy so requires; 
or 
(b) court has determined that the manner of exploitation , by the  owner of 
the patent or licencee, is anti -competitive, and the  Minister is satisfied 
that the exploitation of the invention in  accordance with this subsection 
would remedy such practice.  
(2) The exploitation of the patented invention s hall be limited to the  purpose for 
which it was authorised and shall be subjected to the  payment to the owner of 
an adequate remuneration taking into  account the economic value of the 
Minister’s authorisation, as  determined in the said decision, and, where  a 
decision has been  taken under subsection 1(b), the need to correct anti -
competitive  practices.  Section  16A  CAP. 17.07  Industrial Property Act  
 
 
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 (3) The Minister shall make his decision after hearing the owner of  the patent and 
any interested person if they wish to be heard.  
(4) A request for the Minis ter’s authorisation shall be accompanied  by evidence 
that the owner of the patent has received, from the  person seeking 
authorisation, a request for a contractual  licence, but that person has been 
unable to obtain such a  licence on reasonable commercial te rms and 
conditions and  within a reasonable time.  
(5) Subsection (4) shall not apply in cases of – 
(a) national emergency or other circumstances of extreme urgency  
provided, that in such cases the owner of the patent shall be  notified by 
the Minister’s deci sion as soon as reasonably  practicable;  
(b) public non -commercial use; and  
(c) anti-competitive practices determined as such by the Minister.  
(6) The exploitation of a patented invention in the field of semi -conductor  
technology shall only be authorised ei ther for public non -commercial  use or 
where the Minister has determined that the manner of exploitation  of the 
patented invention, by the owner of the patent or his licencee, is  anti-
competitive and if the Minister is satisfied that the issuance of the  non-
voluntary licence would remedy such practice.  
(7) The authorisation shall not exclude the  - 
(a) conclusion of a licence contract by the owner of the  patent;  
(b) continued exercise, by the owner of the patent, of his  rights under 
section 13(1); or  
(c) issuance of a non -voluntary licence under section 15.  
(8) Where a third person has been designated by the Minister, the  authorisation 
may only be transferred with the enterprise or business of  that person or with 
the part of the enterprise or business with in the  patented invention that is 
being exploited.  
(9) Where the exploitation of the invention by the Government agency or  third 
person designated by the Minister is authorised under subsection  (1), it shall 
be predominantly for the supply of the market in  Tonga and  this authorisation 
shall not apply where the exploitation is authorized under subsection (1) (b).  
(10) Upon request of the owner of the patent of to the Government agency  or of 
the third person authorised to exploit the patented invention, the  Minister 
may, after hearing the parties vary the terms of the decision  authorising the 
exploitation of the patented invention to the extent that  changed 
circumstances justify such variation.  
(11) 
(a) Upon the request of the owner of the patent, the Minister  shall 
terminate the authorisation if he is  Section  17  CAP. 17.07  Industrial Property Act  
 
 
to 2020 Revised Edition  Page  17 
   
 (b) satisfied after hearing the parties that the circumstances which  led to his 
decision have ceased to exist and are unlikely to  occur or that the 
Government agency or third person  designated by him has failed t o 
comply with the terms of the  decision.  
(c) Notwithstanding paragraph (a), the Minister shall not terminate  the 
authorisation if he is satisfied that the need for adequate  protection of 
the legitimate interests of the Government  agency or third person 
designated by him justifies the  maintenance of the decision.  
 
PART III - UTILITY MODEL CERTIF ICATES  
17 Applicability of provisions pertaining to patents  
(1) Subject to section 18 , the provisions of Part II shall apply, mutatis mutandis , 
to utility model certificates or applications therefore, as the case may be.  
(2) Where the right to a patent conflicts with the right to a utility model certificate 
in the case referred to in section 6(3), the said provision shall apply as if the 
word “patent” were replaced by the words “patent or utility model certificate.”  
18 Special provisions pertaining to utility model certificates  
(1) An invention qualifies for a utility model certificate if it is new and  is 
industrially applicable.  
(2) Sections 5(1) and 5(5) s hall not apply in the case of inventions for  which 
utility model certificates are requested.  
(3) A utility model certificate shall expire, without possibility of renewal, at the 
end of the seventh year after the date of the filing of the application.  
(4) Section 14 shall not apply in the case of a utility model certificate.  
(5) In proceedings under section 16, the Court shall invalidate the utility model 
certificates on the following grounds  — 
(a) that the claimed invention did not qualify for a utility mod el certificate, 
having regard to subsection (1) and to sections 5(2), 5(3), 5(4), 5(6) and 
5(8);  
(b) that the description and the claims do not comply with the requirements 
of sections 7(4), 7(5), and 7(6);  
(c) that any drawing which is necessary for the u nderstanding of the 
invention has not been furnished;  
(d) that the owner of the utility model certificate is not the inventor or his 
successor in title.  Section  19  CAP. 17.07  Industrial Property Act  
 
 
Page  18 2020 Revised Edition  to    
 (6) Section 16(2) shall not apply in the case of utility model certificates.  
19 Conversion of applicati ons of patent or utility model certificates  
(1) At any time before the grant or rejection of a patent, an applicant for a patent 
may, upon payment of the prescribed fee, convert his application into an 
application for a utility model certificate, which sha ll be accorded the filing 
date of the initial application.  
(2) At any time before the grant or rejection of a utility model certificate, an 
applicant for a utility model certificate may, upon payment of the prescribed 
fee, convert his application into a pa tent application, which shall be accorded 
the filing date of the initial application.  
(3) An application may not be converted under subsection (1) more than once.  
PART IV - INDUSTRIAL DESIGNS  
20 Registrable industrial designs  
(1) An industrial design is re gistrable if it is new.  
(2) An industrial design shall be new if it has not been disclosed to the public  — 
(a) anywhere in the world by  publication in tangible form; or  
(b) in Tonga, by description or by use or in any other way, prior to the 
filing date or , where applicable, prior to the priority date of the 
application for registration.  
(3) For the purposes of subsection (2), disclosure to the public of an industrial 
design shall not be taken into consideration if it occurred within 12 months 
preceding the  filing date or, where applicable, the priority date of the 
application, and if it was by reason or in consequence of acts committed by 
the applicant or his predecessor in title or of an abuse committed by a third 
party with regard to the applicant or his predecessor in title.  
(4) Industrial designs that are contrary to public order or morality shall not be 
registrable.  
21 Right to registration of industrial designs; naming of creator  
(1) The right to registration of an industrial design shall belong to the  creator of 
that industrial design.  
(2) If two or more persons have jointly created an industrial design, the right to 
the registration of the industrial design shall belong to them jointly.  Section  22  CAP. 17.07  Industrial Property Act  
 
 
to 2020 Revised Edition  Page  19 
   
 (3) If and to the extent to which two or more persons have created the same 
industrial design independently of each other, the person whose application 
has the earliest filing date or, if priority is claimed, the earliest validly claimed 
priority date and leads to the issue of a certificate of registration of the 
industrial design shall have the right to the registration of the industrial 
design.  
(4) The right to the registration of an industrial design may be assigned, or may 
be transferred by succession.  
(5) Where an industrial design is made in execution of  an employment contract, 
the right to the registration of  the industrial design shall belong, in the absence 
of contractual provisions to the contrary, to the employer.  
(6) When an industrial design is made in execution of a commission or an 
employment contract , the right to the registration of the industrial design shall 
belong, in the absence of  contractual provisions to the contrary, to the person 
having commissioned the work or to the employer, as the case may be.  
(7) When the industrial design has an econom ic value much greater than the 
parties could have reasonably foreseen at the time of  concluding the contract 
the person who created the industrial design shall have a right to equitable 
remuneration, which shall be determined by the Court in the absence of  
agreement between the parties.  
(8) Notwithstanding subsections (6) and (7), when an employee, whose 
employment contract does not require him to engage in inventive activity, 
makes, in the field of activities of his employer, an industrial design by using 
data or means available to him through his employment, the right to 
registration of that industrial design shall belong, in the absence of contractual 
provisions to the contrary, to the employer:  
Provided that the employee shall have a right to equitable r emuneration taking 
into account his salary, the economic value of the industrial design and any 
benefit derived from the creation of such industrial design by the employer. In 
the absence of agreement between the parties, the remuneration shall be 
determin ed by the Court. 
(9) Any contractual provision which is less favourable to the creator of the 
industrial design than the provisions of this section shall be null and void.  
(10) The creator of the industrial design shall be named as such in the registration  
of the industrial design, unless in a special written declaration addressed to the 
Registrar, he indicates that he wishes not to be named. Any promise or 
undertaking by the creator made to any person to the effect that he will make 
such a declaration shal l be without legal effect.  
22 Application  
(1) The application for registration of an industrial design shall be filed with the 
Registrar and shall contain a request, drawings, photographs or other adequate Section  23  CAP. 17.07  Industrial Property Act  
 
 
Page  20 2020 Revised Edition  to    
 graphic representations of the article embodying t he industrial design and an 
indication of the kind of products for which the industrial design is to be used. 
It may be accompanied by a specimen of the article embodying the industrial 
design and shall be accompanied by the payment of the prescribed fee.  
(2) Where the applicant is not the creator, the request shall be accompanied by a 
statement justifying the applicant ’s right to the registration of the industrial 
design.  
(3) Section 9 shall apply mutatis mutandis  to applications for registration of 
indust rial designs under this section.  
(4) The applicant may withdraw the application at any time before grant.  
23 Examination; registration of industrial design  
(1) The Registrar shall accord as the filing date the date of receipt of the 
application together wi th the application fee:  
Provided that, at the time of receipt, the application contains the name of the 
applicant and a pictorial representation of the article embodying the industrial 
design or a specimen thereof. Section 11(2) shall apply mutatis mutandi s to 
the application under this subsection.  
(2) After according a filing date, the Registrar shall examine whether the 
application complies with the requirements of sections 22(1) and 22(2).  
(3) The Registrar shall examine whether the industrial design com plies with the 
definition as contained in section 2 and whether it meets the requirements of 
section 20(4).  
(4) Where the Registrar finds that the conditions referred to in subsections (2) and 
(3) are fulfilled, he shall register the industrial design, pub lish the fact of the 
registration and issue to the applicant a certificate of registration of the 
industrial design. Otherwise, he shall reject the application.  
24 Rights conferred by registration; duration and renewal  
(1) Exploitation in respect of an ind ustrial design means the making, selling or 
importation of articles, incorporating the industrial design.  
(2) The exploitation of a registered industrial design in Tonga by persons other 
than the registered owner shall require the permission of the owner.  
(3) The rights conferred by registration of an industrial design shall not extend to 
acts in respect of articles which have been put on the market in Tonga or in 
any other country by the registered owner of the industrial design or with his 
consent.26 
(4) The registered owner of an industrial design shall, in addition to any other 
rights, remedies or actions available to him, have the right to institute court Section  25  CAP. 17.07  Industrial Property Act  
 
 
to 2020 Revised Edition  Page  21 
   
 proceedings against any person who exploits the industrial design or who 
performs acts which make it  likely that infringement will occur.  
(5) The registration of an industrial design shall be for a period of 5 years from 
the filing date of the application for registration. The registration may be 
renewed for two further consecutive periods of 5 years through the payment 
of the prescribed fee. A period of grace of 6 months shall be allowed for the 
late payment of the renewal fee on payment of the prescribed surcharge.  
25 Invalidation  
(1) Any interested person may request the Court to invalidate the registration of 
an industrial design.  
(2) The Court shall invalidate the registration if  — 
(a) the person requesting the invalidation proves that  — 
(i) the industrial design is not an industrial design as defined in 
section 2; or  
(ii) any of the requir ements of section 20 are not complied with; or  
(b) the registered owner of the industrial design is not the creator or his 
successor in title.  
(3) An invalidated registration of an industrial design shall be regarded as null 
and void ab initio . 
(4) The fin al decision of the Court shall be notified to the Registrar who shall 
record it and publish a reference thereto.  
PART V - MARKS, COLLECTIVE MA RKS AND TRADE 
NAMES  
26 Acquisition of the exclusive right to a mark; registrability  
(1) The exclusive right to a m ark shall be acquired by registration in  accordance 
with this Act.  
(2) A mark cannot be validly registered  — 
(a) if it is incapable of distinguishing the goods or services of one 
enterprise from those of other enterprises;  
(b) if it is contrary to public o rder or morality;  
(c) if it is likely to mislead the public or trade circles, in particular as 
regards the geographical origin of the goods or services concerned or 
their nature or characteristics;  Section  27  CAP. 17.07  Industrial Property Act  
 
 
Page  22 2020 Revised Edition  to    
 (d) if it is identical with, or is an imitation of, or con tains as an element, an 
armorial bearing, flag and other emblem, a name or abbreviation or 
initial of the name of, or official sign or hall mark adopted by, a State, 
inter-governmental organization or organization created by an 
international convention, un less authorised by the competent authority 
of that State or organization;  
(e) if it is identical with, or confusingly similar to, or constitutes a 
translation of, a mark or trade name which is well known in Tonga for 
identical or similar goods or services of another enterprise , if it is well 
known and registered in Tonga for goods or services which are not 
identical or similar to those in respect of which registration is applied 
for, provided, in the latter case, that use or the mark in relation to those 
goods or services would indicate a connection between those goods or 
services and the owner of the well -known mark and that the interests of 
the owner of the well -known mark are likely to be damaged by such 
use; or27 
(f) if it is identical with a mark belongi ng to a different proprietor and 
already on the Register, or with an earlier filing or priority date, in 
respect of the same goods or services, or closely related goods or 
services, or if it so nearly resembles such a mark as to be likely to 
deceive or cau se confusion.  
27 Application for registration  
(1) The application for registration of a mark shall be filed with the Registrar and 
shall contain a request, a reproduction of the mark and a list of the goods or 
services for which registration of the mark is  requested, listed under the 
applicable class or classes of the International Classification. It shall be 
accompanied by the payment of the prescribed application fee.  
(2) The application may contain a declaration claiming the priority, as provided 
for in the Paris Convention, of an earlier national or regional application filed 
by the applicant or his predecessor in title,  in or for any State Party to  the said 
Convention or any member of the World Trade Organisation  in which case, 
the Registrar may require  that the applicant furnish, within the prescribed time 
limit, a copy of the earlier application, certified as correct by the office with 
which it was filed. €28 
(3) The effect of the said declaration shall be as provided in the Paris Convention.  
(4) If the Registrar finds that the requirements under subsection 3 have not been 
fulfilled, the said declaration shall be considered not to have been made.  
(5) The applicant may withdraw the application at any time before grant.  Section  28  CAP. 17.07  Industrial Property Act  
 
 
to 2020 Revised Edition  Page  23 
   
 28 Examination; opposition; registration of mark  
(1) The Registrar shall examine whether the applications complies with the 
requirements of section 27(1).  
(2) The Registrar shall examine and determine whether the mark is a mark as 
defined in section 2 and is registrable under section  26(2)(a) to (f).  
(3) Where the Registrar finds that the conditions referred to in subsections (1) and 
(2) are fulfilled, he shall forthwith cause the application, as accepted, to be 
published in the prescribed manner.  
(4) Any interested person may, within  the prescribed period and in the prescribed 
manner, give notice to the Registrar of opposition to the registration of the 
mark on grounds that one or more of the requirements of section 2, relating to 
the definition of a mark, or section 26(2) are not ful filled.  
(5) The Registrar shall send forthwith a copy of a notice under the prescribed 
subsection to the applicant, and, within the prescribed period and in the 
prescribed manner, the applicant shall send to the Registrar a counter -
statement of the grounds  on which he relies for his application. If he does not 
do so, he shall be deemed to have abandoned the application.  
(6) On receiving a counter -statement from the applicant, the Registrar shall 
furnish a copy thereof to the person giving notice of oppositi on and, after 
hearing the parries, if either or both wish to be heard, and considering the 
merits of the case, shall decide whether the mark should be registered.  
(7) After the application is published and until the registration of the mark, the 
applicant has the same privileges and rights as he would have if the mark had 
been registered:  
Provided that it shall be a valid defence to an action brought hereunder in 
respect of an act done after the application was published, if the defendant 
establishes that t he mark could not validly have been registered at the time the 
act was done.  
(8) If the Registrar is satisfied that the conditions referred to in subsections (1) 
and (2) are fulfilled, and  — 
(a) the registration of the mark has not been opposed within the prescribed 
time limit; or  
(b) the registration of the mark has been opposed and the opposition has 
been decided in the applicant ’s favour , 
the Registrar shall register the mark, publish the fact of the registration and 
issue to the applicant a certificate of registration.  
(9) All applications filed with the International Bureau for international 
registration of a mark or marks in which Tonga is designated for the purpose 
of obtaining protection under this Act shall be governed by the provisions of 
this Act and its Regulations and the provisions of the Madrid Protocol and the 
Regulations.29 Section  29  CAP. 17.07  Industrial Property Act  
 
 
Page  24 2020 Revised Edition  to    
 (10) In the event of conflict between the provisions of this Act and its Regulations 
and the provision of the Madrid Protocol and the Regulation pertaining 
thereto, the for mer shall prevail unless the application of these provisions 
contravene the underlying principles of the latter, in which case the latter shall 
prevail, according to prescribed procedures.30 
29 Rights conferred by registration; duration; renewal  
(1) The use  of a registered mark, in relation to any goods or services for which it 
has been registered, by any person other than the registered owner shall 
require the permission of the owner.  
(2) The registered owner of a mark shall, in addition to any other rights , remedies 
or actions available to him, have the right to institute court proceedings 
against any person who infringes the mark by using, without his agreement, 
the mark as referred to in subsection (1) or who performs acts which make it 
likely that infrin gement will occur. The right shall extend to the use of a sign 
similar to the registered mark and to the use in relation to goods and services 
similar to those for which the mark has been registered, where the effect may 
mislead the public.  
(3) The rights conferred by registration of a mark shall not extend to acts in 
respect of articles which have been put on the market in Tonga or in any other 
country by the registered owner or with his consent.31 
(4) The registration of a mark shall be for a period of 10 years from the filing date 
of the application for registration. The registered mark may be renewed for 
consecutive periods of 10 years, provided that the registered proprietor pays 
the prescribed renewal fee. A period of grace of 6 months shall be allowed for 
the late payment of the renewal fee on payment of the prescribed surcharge.  
30 Invalidation; removal on grounds of non -use 
(1) Any interested person may request the Registrar to invalidate the registration 
of a mark.  
(2) The Registrar shall invalidate the registration if the person requesting the 
invalidation proves that  — 
(a) any of the requirements of a mark as defined in section 2; or  
(b) any of the requirements of section 26(2) are not fulfilled.  
(3) Any invalidation of a registration of a mark shal l be deemed to have been 
effective as of the date of registration, and it shall be recorded and a reference 
thereto shall be published as soon as possible.  
(4) Any interested person may request the Registrar to remove a mark from the 
Register, in respect of any of the goods or services for which it is registered, 
on the grounds that, up to one month prior to filing the request, the mark had, Section  31  CAP. 17.07  Industrial Property Act  
 
 
to 2020 Revised Edition  Page  25 
   
 after its registratio n, not been used by the registered owner or a licensee 
during a continuous period of 3 years or longer : 
Provided that a mark shall not be removed if it is shown that special 
circumstances prevented the use of the mark and that there was no intention 
not to  use or to abandon the same in respect of those goods or service.  
31 Collective mark  
(1) Subject to subsections (2) and (3), the provisions of sections 26 to 30 relating 
to marks shall apply to collective marks.  
(2) An application for registration of a col lective mark shall designate the mark as 
a collective mark and shall be accompanied by a copy of the conditions 
governing the use of the collective mark.  
(3) The registered owner of a collective mark shall notify the Registrar of any 
changes made in respec t of the condition referred to in subsection (2).  
(4) In addition to the grounds provided in section 30(2), the Registrar shall 
invalidate the registration of a collective mark if the person requesting the 
invalidation proves that only the registered owner  uses the mark, or that he 
uses or permits its use in contravention of the conditions referred to in 
subsection (2) or that he uses or permits its use in a manner liable to mislead 
trade circles or the public as to the origin or any other common characteri stics 
of the goods or services concerned.  
32 Licensing of marks and collective marks  
(1) Any licence contract concerning the registration of a mark, or an application 
therefore, shall provide for effective control by the licensor of the quality of 
the good s or services of the licensee in connection with which the mark is 
used. If the licence contract does not provide for such quality control or if 
such quality control is not effectively carried out, the licence contract shall not 
be valid and the exclusive right referred to in section 29(1) and (2) may not be 
exercised.  
(2) The registration of a collective mark, or an application therefore, may not be 
the subject of a licence contract.  
33 Trade names  
(1) A name or designation may not be used as a trade name if by its nature or the 
use to which it may be put, it is contrary to public order or morality and if, in 
particular, it is liable to mislead trade circles or the public as to the nature of 
the enterprise identified by that name.  Section  34  CAP. 17.07  Industrial Property Act  
 
 
Page  26 2020 Revised Edition  to    
 (2) Notwithstanding any la ws or regulations providing for any obligation to 
register trade names, such names shall be protected, even prior to or without 
registration, against any unlawful act committed by third parties.  
(3) In particular, any subsequent use of the trade name by a third party, whether 
as a trade name or a mark or collective mark, or any such use of a similar 
trade name or mark, likely to mislead the public shall be deemed unlawful.  
PART VI - ACTS OF UNFAIR COMPE TITION  
34 Acts of unfair competition  
(1) Any act of com petition contrary to honest practices in industrial or 
commercial matters shall be unlawful.  
(2) The following acts, in particular, shall be deemed to constitute acts of unfair 
competition  — 
(a) all acts of such nature as to create confusion by any means w hatever 
with the establishment, the goods, or the industrial or commercial 
activities of a competitor;  
(b) false allegations in the course of trade of such nature as to discredit the 
establishment, the goods, or the industrial or commercial activities, of a 
competitor;  
(c) indications or allegations the use of which in the course of trade is 
likely to mislead the public as to the nature, the manufacturing process, 
the characteristics, the suitability for their purpose, or the quantity of 
goods.  
PART VII - GENERAL PROVISIONS  
35 Representation by agent  
Where the applicant’s ordinary residence or principal place of business is outside 
Tonga, he shall be represented by an agent.  
36 Changes in ownership; licence contracts  
(1) Any change in the ownership of a patent, utility model, industrial design, 
mark or collective mark shall be in writing and shall, at the request of any 
interested party to the Registrar, be recorded and, except in the case of an 
application, be published by the Registrar. Such change shal l have no effect 
against third parties until it is recorded.  Section  36  CAP. 17.07  Industrial Property Act  
 
 
to 2020 Revised Edition  Page  27 
   
 (2) Any change in the ownership of a collective mark, shall require previous 
approval by the Minister.  
(3) Any change in the ownership of a trade name shall be made with the transfer 
of the enter prise or the part thereof identified by that name and shall be in 
writing.  
(4) A change in the ownership of a mark or in the ownership of a collective mark 
shall, however, be invalid if it is likely to deceive or confuse, particularly in 
regard to the natu re, origin, manufacturing process, characteristics, or 
suitability for their purpose, of the goods or services in relation to which the 
mark or collective mark is intended to be used or is being used.  
(5) Any licence contract concerning a patent, a utility  model certificate, a 
registered industrial design or a registered mark, or an application therefore, 
shall, be submitted to the Registrar who shall keep its contents confidential 
but record it and publish the fact of having recorded such licence contract.  
Any such licence contract shall be deemed to be invalid until submitted to the 
Registrar.  
(6) Where the Registrar, after consultation with the Minister, is of the opinion 
that any clause in a licence contract or relating to such a contract imposes 
unjusti fied restrictions on the licensee with the consequence that the contract, 
taken as a whole, is harmful to the economic interests of Tonga, the Registrar 
shall notify the parties to the contract accordingly and invite them to modify 
the contract so that i t does not impose such restrictions and, if they fail to do 
so, he shall declare the clause to be invalid from the date of notification.  
(7) For the purposes of this Act, “unjustified restrictions” are restrictions which 
entail for the licensee, in the indus trial or commercial field, restrictions not 
deriving from the rights conferred by the grant of a patent or a utility model 
certificate or the registration of an industrial design or a mark or restrictions 
unnecessary for the safeguarding of those rights.  
(8) In the examination of licence contracts relating to patents and utility model 
certificates under subsection (6), the Registrar shall take into consideration, in 
particular, any clause contained in a contract the effect of which would be  — 
(a) to import technology from abroad when substantially similar or 
equivalent technology may be obtained on the same or more favourable 
conditions without any importation of the technology from abroad;  
(b) to oblige the licensee to give consideration which is disproport ionate to 
the value of the technology to which the contract relates;  
(c) to oblige the licensee to acquire any materials from the licensor or from 
sources designated or approved by the licensor unless it is otherwise 
impossible, for all practical purposes,  to ensure the quality of the 
products to be produced and provided that the said materials are 
supplied at a reasonable price;  Section  36  CAP. 17.07  Industrial Property Act  
 
 
Page  28 2020 Revised Edition  to    
 (d) to restrict the licensee ’s freedom to acquire any materials from any 
source, unless it is otherwise impossible, for all pract ical purposes, to 
ensure the quality of the products to be produced;  
(e) to restrict the licensee ’s freedom to use any materials which are not 
supplied by the licensor or by sources designated or approved by the 
licensor, unless it is otherwise impossible,  for all practical purposes, to 
ensure the quality of the products to be produced;  
(f) to oblige the licensee to sell the products produced by him exclusively 
or principally to persons designated by the licensor;  
(g) to oblige the licensee to make availabl e to the licensor, without 
appropriate consideration, any improvements made by the licensee with 
respect to the technology to which the contract relates;  
(h) to limit the quantity of the products produced by the licensee;  
(i) to restrict the licensee ’s freedom to export or to allow others to export 
the products produced by him, provided that such restriction may be 
justified if the licensor owns in a country to which such a restriction 
applies, a patent which would be infringed in case of importation of the  
said products into the said country, if the licensor has a contractual 
obligation not to allow others to export the said products to such a 
country or if the licensor already supplies the market in such a country 
with the same products;  
(j) to oblige the licensee to employ persons designated by the licensor not 
needed for the efficient transfer of the technology to which the contract 
relates;  
(k) to impose restrictions on research or technological development carried 
out by the licensee;  
(l) to restrict th e licensee ’s freedom to use any technology other than the 
technology to which the contract relates;  
(m) to extend the coverage of the contract to technology not required to 
achieve the objective of the contract and to oblige the licensee to give 
considerat ion for such technology;  
(n) to fix prices for the sale or resale of the products produced by the 
licensee;  
(o) to exempt the licensor from any liability resulting from any defect 
inherent in the technology to which the contract relates or to restrict 
such liability unreasonably;  
(p) to restrict the licensee ’s freedom to use, after the expiration of his 
contractual obligations, the technology acquired as a result of the 
contract, subject, however, to any right of the licensor under a patent;  
(q) to establis h the duration of the contract for a period which is 
unreasonably long in relation to the economic function of the contract, 
provided that any period which does not exceed the duration of the Section  37  CAP. 17.07  Industrial Property Act  
 
 
to 2020 Revised Edition  Page  29 
   
 patent to which the contract relates shall not be regarded as 
unreasonably long.  
37 Registrar  
(1) His Majesty in Privy Council may from time to time appoint some person to 
be the Registrar of Industrial Property, and may make regulations, consistent 
with this Act, prescribing the duties and powers of the Registrar.  
(2) The Registrar so appointed may hold his office in conjunction with any other 
office which His Majesty in Privy Council deems not incompatible therewith.  
38 Functions of the Registrar  
(1) The Registrar shall  — 
(a) grant patents and utility model certificates;  
(b) register industrial designs, marks and collective marks; and  
(c) perform such other duties and exercise such powers as are conferred by 
this Act or the regulations made thereunder.  
(2) Decisions of the Registrar shall be signed and sealed  by the Registrar or an 
official designated by him.  
(3) The Minister shall determine the organizational structure and the financial and 
budgetary systems of the Registry.  
39 Registers ; Gazette  
(1) The Registrar shall maintain separate registers for patents , utility model 
certificates, industrial designs and marks. Collective marks shall be  registered 
in a special section of the register of marks.  
(2) The registers may be consulted by any person and extracts therefrom obtained 
by any person, on payment of th e prescribed fee.  
(3) The Registrar shall publish in the Gazette and any other publication approved 
by him all matters required to be published under this Act.32 
(4) The Registrar shall keep copies as last revised, of the Paris Convention, the 
Nice Agreemen t and any other international agreement referred to in this Act 
or in any Regulations made thereunder for public inspection at no cost.  
40 Correction o f errors ; extension of time  
(1) The Registrar may, subject to any provisions in the regulations, correct any 
error of translation or transcription or clerical error in any application or Section  41  CAP. 17.07  Industrial Property Act  
 
 
Page  30 2020 Revised Edition  to    
 document filed with the Registrar or in any entry in a register effected 
pursuant to this Act or the Regulations.  
(2) If the Registrar is satisfied that the circumstances jus tify it, he may upon 
receiving a written request, extend the time for doing any act or taking any 
proceeding under this Act and the regulations made thereunder upon notice to 
the parties concerned and upon such terms as he may direct. The extension 
may be granted though the time for doing the act or taking the proceeding has 
expired.  
41 Exercise of discretionary power  
The Registrar shall give any party to a proceeding before him an opportunity to be 
heard before exercising adversely to that party any discre tionary power vested in the 
Registrar by this Act or the regulations.  
42 Competence of court  
(1) The Court shall have jurisdiction in cases of dispute relating to the application 
of this Act and the regulations and in matters which under this Act are to be  
referred to the Court. 
(2) Any decision taken by the Registrar under this Act, in particular, the grant of 
a patent or of a utility model certificate or the registration of an industrial 
design or of a mark or collective mark, or the rejection of an appli cation for 
such a grant or registration, may be the subject of an appeal by any interested 
party before the Court and such appeal shall be filed within 2 months of the 
date of the decision.  
43 Infringement ; unlawful acts ; offences  
(1) Subject to sections 1 3(4) and (5), 15, 24(3) and 29(3), an infringement shall 
consist of the performance, in Tonga, by any person other than the owner of 
the title of protection, without the permission of the owner, of any act referred 
to in sections 13, 24 and 29.  
(2) On the request of the owner of the title of protection, or of a licensee if he has 
requested the owner to institute court proceedings for a specific relief and the 
owner has refused or failed to do so, the Court may grant an injunction to 
prevent infringement, an  imminent infringement, or an unlawful act referred 
to in sections 33 (2) and (3) and 34, award damages and grant any other 
remedy provided for in the general law.  
(3) On the request of any competent authority or any interested person, 
association or syndi cate, the Court may grant the same relief in case of an act 
of unfair competition referred to in section 34.  Section  44  CAP. 17.07  Industrial Property Act  
 
 
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 (4) Any person who performs an act which constitutes an infringement as defined 
in subsection (1) or an unlawful act as defined in sections 33(2) a nd (3), and 
section 34, commits an offence and is liable upon conviction to a fine of 
$5,000 or to imprisonment for a term of 5 years or to both.  
44 Regulations  
(1) The Minister may with the consent of Cabinet make regulations for the better 
carrying into effect of the purposes of this Act.  
(2) Regulations made under subsection (1) may, in particular, prescribe  — 
(a) application fees for the grant of patents, utility model certificates and 
for the registration of industrial designs, marks and collective mar ks; 
(b) the fees for copies of patents for the public;  
(c) any other fees required under the Act;  
(d) the surcharge payable in respect of late payment of maintenance or 
renewal fees;  
(e) conditions under which a person may obtain extracts from registers in  
terms of section 39(2); and  
(f) and any other matter required to be prescribed under this Act.  
45 Administrative instructions  
The Registrar may issue administrative instructions relating to the procedures under 
this Act and the regulations as well as to o ther functions of his office.  
46 Savings and transitional provisions  
(1) The Registration of United Kingdom Trade  Marks Act33 is hereby repealed.  
(1A)  Notwithstanding subsection (1), the Registration of United Kingdom Trade 
Marks Act is deemed to be in force as from 31 January 1997 until the Minister 
notifies in the Gazette a date for regulations under this Act to come into 
force.34 
(2) A person who  is the owner of a trade mark registered under  the Registration  
of United Kingdom Trade Marks Act  or has fil ed an application for 
registration of a trade mark under the provisions of the United Kingdom  Act; 
may within 12 months of the repeal of the United Kingdom Trade Marks Act , 
file an application for the registration of a trade mark under this Act . Such 
appli cation shall be accorded the filing date or priority date accorded to the 
application or registration in the United Kingdom.35    CAP. 17.07  Industrial Property Act  
 
 
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ENDNOTES  
1 Act 19 of 1994  
Amending Acts  Commencement  
Act 6 of 1999  11 August 1999  
Act 42 of 2002  12 February 2004  
Act 5 of 2009  5 November 2009  
Act 5 of 2012  30 July 2012  
 
2 No commencement proclamation found at the date of the preparation of this revised edition  
3 Amended by Act 5 of 2009  
4 Amended by Act 5 of 2012  
5 Amended by Act 5 of 2009  
6 Amended by Act 5 of 2009  
7 Amended by Act 5 of 2009  
8 Amended by Act 5 of 2009  
9 Amended by Act 5 of 2009  
10 Inserted by Act 5 of 2009  
11 Inserted by Act 5 of 2009  
12 Inserted by Act 5 of 2009  
13 Inserted by Act 5 of 2009  
14 Inserted by Act 5 of 2009  
15 Amended by Act 5 of 2009  
16 Inserted by Act 5 of 2009  
17 Amended by Act 5 of 2009  
18 Amended by Act 5 of 2009  
19 Amended by Act 5 of 2009  
20 Inser ted by Act 5 of 2009  
21 Inserted by Act 5 of 2009  
22 Inserted by Act 5 of 2009  
23 Inserted by Act 5 of 2009  
24 Inserted by Act 5 of 2009  
25 Inserted by Act 5 of 2009  Industrial Property Act    CAP. 17.07   
 
 
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26 Amended by Act 5 of 2009  
27 Amended by Act 5 of 2009  
28 Amended by Act 5 of 2009  
29 Inserted by Act 5 of 2009  
30 Inserted by Act 5 of 2009  
31 Amended by Act 5 of 2009  
32 Amended by Act 5 of 2009  
33 Cap. 120, 1988 Revised Edition  
34 Inserted by Act 6 of 1999  
35 Amended by Act 6 of 1999