LAWS OF FIJI  
Ed. 1978 ] 
CHAPTER 240  
TRADE -MARKS  
 
ARRANGEMENT OF SECTIONS  
PART I -PRELIMINARY  
SECTION  
1. Short title.  
2. Interpretation.  
PART II -GENERAL  
Register of Trade -Marks  
3. Register of Trade -Marks  
4. No trust to be entered.  
5. Incorporation of existing register.  
6. Inspection of register and granting of certified copies.  
Registrable Trade -Marks  
7. Connexion of trade -marks with goods.  
8. Trade -marks. What marks are registrable as such.  
9. Coloured trade -marks.  
10. Further restriction on registration.  
Registration of Trade -Marks  
11. Application for registration.  
12. Advertisement of application.  
13. Opp osition to registration.  
14. Disclaimer.  
15. Date of registration.  
16. Certificate of registration.  
17. Limit of time for proceeding with application.  
Identical Trade -Mark  18. Identical marks.  
19. Rival claims to identical marks.  
20. Concurrent user.  
Assig nment  
21. Assignment and transmission of trade -marks.  
22. Apportionment of marks on dissolution of partnership.  
Associated Trade -Marks  
23. Associated trade -marks.  
24. Combined trade -marks.  
25. Series of trade -marks.  
26. Assignment and user of associated trade -marks.  
Renewal of Registration  
27. Duration and renewal of registration.  
28. Renewal of registration.  
29. Procedure on expiry of period of registration.  
30. Status of unrenewed trade -mark.  
Correction and Rectificat ion of the Register  
31. Registrar may correct formal errors in applications.  
32. Entry in register of assignments.  
33. Application to alter registered trade -marks.  
34. Rectification of register by the court.  
35. Trade -marks registered under previous enactm ents. 
36. Non -user of trade -mark.  
Effect of Registration  
37. Powers of registered proprietor.  
38. Rights of proprietor of trade -mark.  
39. Registration to be prima facie evidence of validity.  
40. Registration to be conclusive after seven years.  
41. No protection for unregistered trade -marks.  
42. Action for infringement.  
43. No interference with bona fide user of name or description 
of goods.  
44. Action for passing off goods.  
Legal Proceedings  
45. Certificates of validity.  
46. Procedure before court . 
Costs  47. Costs  
Evidence  
48. Evidence.  
49. Certificate of registration to be prima facie evidence.  
Powers and Duties of Registrar of Trade -Marks  
50. Exercise of discretionary power by Registrar.  
51. Agents.  
52. Power to make rules.  
Fees  
53. Fees.  
Offences  
54. Offences  
PART III -BRITISH TRADE -MARKS  
55. Registration of British trade -marks.  
56. Form of application.  
57. Certificate to issue.  
58. Effect of certificate.  
59. Date of registration.  
60. Passing off.  
61. Power of court.  
62. Assignment.  
63. Assignee to be entered as proprietor.  
64. Renewals.  
65. Powers of Registrar.  
66. Saving.  
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TRADE -MARKS  
Ordinances Nos. 18 of 1933, 2 of 1945,  
9 of 1966,  37 of 1966,  
Act No. 13. of 1972.  
AN ACT  
TO CONSOLID ATE AND AMEND THE LAW 
RELATING TO TRADE -MARKS  
[25th July, 1933. ] PART I -PRELIMINARY  
Short title  
1. This Act may be cited as the Trade -Marks Act.  
Interpretation  
2. In this Act, unless the context otherwise requires - 
"mark" includes a device, brand, 
heading,  label, ticket, name, 
signature, word, letter, numeral 
or any combination thereof;  
"trade -mark" means a mark used 
or proposed to be used upon or in 
connexion with goods for the 
purpose of indicating that they 
are the goods of the proprietor of 
such trade -mark by virtue of 
manufacture, selection, 
certification, dealing with or 
offering for sale;  
"registrable trade -mark" means a 
trade -mark which is capable of 
registration under the provisions 
of this Act;  
"the register" means the register 
of trade -marks kept under the 
provisions of this Act;  
"registered trade -mark" means a 
trade -mark which is actually 
upon the register;  
"prescribed" means, in relation to 
proceedings before the court, 
prescribed by rules of court, and 
in other cases prescribed by thi s 
Act or the rules thereunder;  
"the court" means the Supreme 
Court.  
PART II -GENERAL  
Register of Trade -Marks  3. There shall be kept at the Administrator -General's office for 
the purposes of this Act a book called the "Register of Trade -
Marks" wherein shall be entered all registered trade -marks with 
the names and addresses of their proprietors, notifications of 
assignments and transmissions, disclaimers, conditions, 
limitations and such other matters relating to such trade -marks 
as may from time to time be pr escribed. The register shall be 
kept under the control and management of the Administrator -
General who is in this Act referred to as the Registrar.  
No trust to be entered  
4. There shall not be entered in the register any notice of any 
trust, expressed, imp lied or constructive, nor shall any such 
notice be receivable by the Registrar.  
Incorporation of existing Register  
5. The register of trade -marks existing at the commencement of 
this Act shall be incorporated with and form part of the register. 
Subject to the provisions of sections 35 and 40, the validity of 
the original entry of any trade -mark upon the register so 
incorporated shall be determined in accordance with the 
statutes in force at the date of such entry and such trade -mark 
shall retain its original date, but for all other purposes it shall be 
deemed to be a trade -mark registered under this Act.  
Inspection of re gister and granting of certified copies  
6. The register kept under this Act shall at all convenient times 
be open to the inspection of the public subject to such 
regulations as may be prescribed, and entry in any, such 
certified copies, sealed with the sea l of the Registrar, of any 
entry in such register shall be given to any person requiring the 
same on payment of the prescribed fee.  
Registrable Trade -marks  
Connexion of trade -marks with goods  
7. A trade -mark must be registered in respect of particular 
good s or classes of goods.  
Trade marks. What marks are registrable as such  
8.-(1) A registrable trade -mark must contain or consist of at 
least one of the following essential particulars: - (a) the name of a company, 
individual or firm represented in 
a special o r particular manner;  
(b) the signature of the applicant 
for registration or some 
predecessor in his business;  
(c) an invented word or invented 
words;  
(d) a word or words having no 
direct reference to the character 
or quality of the goods and not 
being, acc ording to its ordinary 
signification, a geographical 
name or a surname;  
(e) any other distinctive mark, but 
a name, signature or word or 
words other than such as fall 
within the descriptions in 
paragraphs ( a), (b), (c) and ( d) 
shall not be registrable unde r the 
provisions of this paragraph 
except upon evidence of its 
distinctiveness:  
Provided always that any special or distinctive word or words, 
letter, numeral or combination of letters or numerals used as a 
trade -mark by the applicant or his predecessors i n business 
before the twenty -second day of April, 1886, which has 
continued to be used either in its original form or with additions 
or alterations not substantially affecting the identity of the same 
down to the date of the application for registration sh all be 
registrable as a trade -mark under this Act.  
(2) For the purposes of this section "distinctive" shall mean 
adapted to distinguish the goods of the proprietor of the trade -
mark from those of other persons. In determining whether a 
trade -mark is so ada pted the tribunal may, in the case of a 
trade -mark in actual use, take into consideration the extent to 
which such user has rendered such trade -mark in fact 
distinctive for the goods with respect to which it is registered or 
proposed to be registered.  
Coloured trade -marks  
9. A trade -mark may be limited in whole or in part to one or 
more specified colours, and in such case the fact that it is so limited shall be taken into consideration by any tribunal having 
to decide on the distinctive character of suc h trade -mark. If and 
so far as a trade -mark is registered without limitation of colour 
it shall be deemed to be registered for all colours.  
Further restriction on registration  
10. It shall not be lawful to register as a trade -mark or part of a 
trade -mark a ny matter the use of which would, by reason of its 
being calculated to deceive or otherwise, be disentitled to 
protection in a court of justice or would be contrary to law or 
morality, or any scandalous design.  
Registration of Trade -Marks  
Application for r egistration  
11.-(1) Any person claiming to be the proprietor of a trade -
mark who is desirous of registering the same shall apply in 
writing to the Registrar in the prescribed manner.  
(2) Subject to the provisions of this Act, the Registrar may 
refuse such application or may accept it absolutely or subject to 
conditions, amendments or modifications or to such limitations, 
if any, as to mode or place of user or otherwise as he may think 
right to impose.  
(3) In case of any such refusal or conditional acceptanc e the 
Registrar shall, if required by the applicant, state in writing the 
grounds of his decision and the materials used by him in 
arriving at the same, and such decision shall be subject to 
appeal to the court.  
(4) An appeal under this section shall be ma de in the prescribed 
manner and on such appeal the court shall, if required, hear the 
applicant and the Registrar, and shall make an order 
determining whether and subject to what conditions, 
amendments or modifications, if any, or to what limitations, if 
any, as to mode or place of user or otherwise the application is 
to be accepted.  
(5) Appeals under this section shall be heard on the materials so 
stated by the Registrar to have been used by him in arriving at 
his decision and no further grounds of objecti on to the 
acceptance of the application shall be allowed to be taken by 
the Registrar other than those stated by him except by leave of 
the court hearing the appeal. Where any further grounds of 
objection are taken, the applicant shall be entitled to withd raw 
his application without payment of costs on giving notice as 
prescribed.  (6) The Registrar or the court as the case may be may at any 
time, whether before or after acceptance, correct any error in or 
in connexion with the application or may permit the applicant 
to amend his application upon such terms as they may think fit.  
Advertisement of application  
12. When an application for registration of a trade -mark has 
been accepted, whether absolutely or subject to conditions and 
limitations, the Registrar sh all, as soon as may be after such 
acceptance, cause the application as accepted to be advertised 
in the prescribed manner. Such advertisement shall set forth all 
conditions and limitations subject to which the application has 
been accepted:  
Provided that a n application under the provisions of paragraph 
(e) of subsection (1) of section 8 may be advertised on receipt 
of such application and before acceptance.  
Opposition to registration  
13.-(1) Any person may within the prescribed time from the 
date of the adv ertisement of an application for the registration 
of a trade -mark give notice to the Registrar of opposition to 
such registration.  
(2) Such notice shall be given in writing in the prescribed 
manner and shall include a statement of the grounds of 
opposition . 
(3) The Registrar shall send a copy of such notice to the 
applicant and within the prescribed time after the receipt of 
such notice the applicant shall send to the Registrar in the 
prescribed manner a counter -statement of the grounds on which 
he relies f or his application and, if he does not do so, he shall 
be deemed to have abandoned his application.  
(4) If the applicant sends such counter -statement the Registrar 
shall furnish a copy thereof to the persons giving notice of 
opposition and shall, after hea ring the parties if so required and 
considering the evidence, decide whether and subject to what 
conditions or what limitations as to mode or place of user or 
otherwise registration is to be permitted.  
(5) The decision of the Registrar shall be subject to appeal to 
the court.  
(6) An appeal under this section shall be made in the prescribed 
manner and on such appeal the court shall, if required, hear the 
parties and the Registrar and shall make an order determining whether and subject to what conditions, if any, or what 
limitations, if any, as to mode or place of user or otherwise 
registration is to be permitted.  
(7) On the hearing of any such appeal any party may either in 
the manner prescribed or by special leave of the court bring 
forward further material for the consideration of the court.  
(8) In proceedings under this section no further grounds of 
objection to the registration of a trade -mark shall be allowed to 
be taken by the opponent or the Registrar other than those 
stated by the opponent as herein ab ove provided except by 
leave of the court hearing the appeal. Where any further 
grounds of objection are taken, the applicant shall be entitled to 
withdraw his application without payment of the costs of the 
opponent on giving notice as prescribed.  
(9) In any appeal under this section the court may, after hearing 
the Registrar, permit the. trade -mark proposed to be registered 
to be modified in any manner not substantially affecting the 
identity of such trade -mark, but in such case the trade -mark as 
so modif ied shall be advertised on the prescribed manner 
before being registered.  
(10) If a party giving notice of opposition or of appeal neither 
resides nor carries on business in Fiji, the court may require 
such party to give security for costs of the proceedin gs before it 
relative to such opposition or appeal and in default of such 
security being duly given may treat the opposition or appeal as 
abandoned.  
Disclaimer  
14. If a trade -mark contains parts not separately registered by 
the proprietor as trade -marks or  if it contains matter common to 
the trade or otherwise of a nondistinctive character, the 
Registrar or the court in deciding whether such trademark shall 
be entered or shall remain upon the register may require as a 
condition of its being upon the registe r that the proprietor shall 
disclaim any right to the exclusive use of any part or parts of 
such trade -mark or of all or any portion of such matter to the 
exclusive use of which they hold him not to be entitled or that 
he shall make such other disclaimer a s they may consider 
needful for the purpose of defining his rights under such 
registration:  
Provided always that no disclaimer upon the register shall 
affect any rights of the proprietor of a trade -mark except such 
as arise out of the registration of the trade -mark in respect of 
which the disclaimer is made.  Date of registration  
15. When an appli cation for registration of a trade -mark has 
been accepted and has not been opposed and the time for notice 
of opposition has expired or, having been opposed, the 
opposition has been decided in favour of the applicant, the 
Registrar shall, unless the mark h as been accepted in error, 
register the said trade -mark, and the trade -mark when 
registered shall be registered as of the date of the application 
for registration and such date shall be deemed for the purpose 
of this Act to be the date of registration.  
Certificate of registration  
16. On the registration of a trade -mark the Registrar shall issue 
to the applicant a certificate in the prescribed form of the 
registration of such trade -mark under the hand and seal of the 
Registrar.  
Limit of time for proceedin g with application  
17. Where registration of a trade -mark is not completed within 
twelve months from the date of the application by reason of 
default on the part of the applicant, the Registrar may, after 
giving notice of the non -completion to the applican t in writing 
in the prescribed manner, treat the application as abandoned 
unless it is completed within the time specified in that behalf in 
such notice.  
Identical Trade -Marks  
Identical marks  
18. Except by order of the court or in the case of trade -marks i n 
use before the twenty -second day of April, 1886, no trade -mark 
shall be registered in respect of any goods or description of 
goods which is identical with one belonging to a different 
proprietor which is already on the register with respect to such 
goods  or description of goods or so nearly resembling such a 
trade -mark as to be calculated to deceived  
Rival claims to identical marks  
19. Where each of several persons claims to be proprietor of the 
same trademark or of nearly identical trade -marks in respec t of 
the same goods or description of goods and to be registered as 
such proprietor, the Registrar may refuse to register any of 
them until their rights have been determined by the court or 
have been settled by agreement in a manner approved by him.  Concur rent user  
20. In the case of honest concurrent user or of other special 
circumstances which in the opinion of the court or Registrar 
make it proper so to do, the court or Registrar may permit the 
registration of the same trade -mark or of nearly identical t rade-
marks for the same goods or description of goods by more than 
one proprietor subject to such conditions and limitations, if any, 
as to mode or place of user or otherwise as the court or the 
Registrar, as the case may be, may think it right to impose.  
Assignment  
Assignment and transmission of trade -marks  
21. A trade -mark when registered shall be assigned and 
transmitted only in connexion with the goodwill of the business 
concerned in the goods for which it has been registered and 
shall be determinable w ith the goodwill. But nothing in this 
section contained shall be deemed to affect the right of the 
proprietor of a registered trade -mark to assign the right to use 
the same in any country or territory of the Commonwealth or 
protectorate or foreign country in connexion with any goods for 
which it is registered together with the goodwill of the business 
therein in such goods, and the assignment of such right to use 
the same shall constitute the assignee a proprietor of a separate 
trade -mark for the purpose of  section 20 subject to such 
conditions and limitations as may be imposed under that 
section.  
(Amended by 37 of 1966, s. 63.)  
Apportionment of marks on dissolution of partnerships  
22. In any case where from any cause, whether by reason of 
dissolution of par tnership or otherwise, a person ceases to carry 
on business and the goodwill of such person does not pass to 
one successor but is divided, the Registrar may, subject to the 
provisions of this Act as to associated trade -marks, on the 
application of the part ies interested permit an apportionment of 
the registered trade -marks of the person among the persons in 
fact continuing the business subject to such conditions and 
modifications, if any, and to such limitations, if any, as to mode 
or place of user as he ma y think necessary in the public interest. 
Any decision of the Registrar under this section shall be subject 
to appeal to the court.  
Associated trade -marks  
23. If application be made for the registration of a trade -mark 
identical with or so closely resembli ng a trade -mark of the applicant already on the register for the same goods or 
description of goods as to be calculated to deceive or cause 
confusion if used by a person other than the applicant, the 
tribunal hearing the application may require as a condit ion of 
registration that such trade -marks shall be entered on the 
register as associated trade -marks.  
Combined trade -marks  
24. If the proprietor of a trade -mark claims to be entitled to the 
exclusive use of any portion of such trade -mark separately he 
may apply to register the same as separate trade -marks. Each 
such separate trade -mark must satisfy all the conditions and 
shall have all the incidents of an independent trade -mark except 
that when registered it and the trade -mark of which it forms a 
part shall  be deemed to be associated trade -marks and shall be 
entered on the register as such, but the user of the whole trade -
mark shall, for the purposes of this Act, be deemed to be also a 
user of such registered trade -marks belonging to the same 
proprietor as i t contains.  
Series of trade -marks  
25. When a person claiming to be the proprietor of several 
trade -marks for the same description of goods which, while 
resembling each other in the material particulars thereof, yet 
differ in respect of - 
(a) statements of t he goods for 
which they are respectively used 
or proposed to be used; or  
(b) statements of number, price, 
quality or names of places; or  
(c) other matter of a non -
distinctive character which does 
not substantially affect the 
identity of the trade -mark; or  
(d) colour,  
seeks to register such trade -marks, they may be registered as a 
series in one registration. All the trade -marks in a series of 
trade -marks so registered shall be deemed to be and shall be 
registered as associated trade -marks.  
Assignment and use r of associated trade -marks  26. Associated trade -marks shall be assignable or transmissible 
only as a whole and not separately, but they shall for all other 
purposes, be deemed to have been registered as separate trade -
marks:  
Provided that where, under the  provisions of this Act, user of a 
registered trade -mark is required to be proved for any purpose, 
the tribunal may, if and so far as it shall think right, accept user 
of an associated registered trade -mark or of the trade -mark with 
additions or alteration s not substantially affecting its identity as 
an equivalent of such user.  
Renewal of Registration  
Duration and renewal of registration  
27. The registration of a trade -mark shall be for a period of 
fourteen years but may be renewed from time to time in 
accordance with the provisions of this Act.  
Renewal of registration  
28. The Registrar shall, on application made by the registered 
proprietor of a trade -mark in the prescribed manner and within 
the prescribed period, renew the registration of such trade -mark 
for a period of fourteen years from the expiration of the original 
registration or of the last renewal of registration as the case 
may be, which date is herein termed "the expiration of the last 
registration".  
Procedure on expiry of period of registration  
29. At the prescribed time before the expiration of the last 
registration of a trade -mark the Registrar shall send notice in 
the prescribed manner to the registered proprietor at his 
registered address of the date at which the existing registration 
will ex pire and the conditions as to payment of fees and 
otherwise for which a renewal of such registration may be 
obtained, and, if at the expiration of the time prescribed in that 
behalf such conditions have not been duly complied with, the 
Registrar may remove  such trade -mark from the register subject 
to such conditions, if any, as to its restoration to the register as 
may be prescribed.  
Status of unrenewed trade -mark  
30. Where a trade -mark has been removed from the register for 
non-payment of the fee for renew al, such trade -mark shall 
nevertheless for the purpose of any application for registration 
during one year next after the date of such removal be deemed to be a trade -mark which is already registered unless it is 
shown to the satisfaction of the Registrar that there had been no 
bona fide trade user of such trade -mark during the two years 
immediately preceding such removal.  
Correction and Rectification of the Register  
Registrar may correct formal errors in applications  
31. The Registrar may on request made i n the prescribed 
manner by the registered proprietor or by some person entitled 
by law to act in his name - 
(a) correct any error in the name 
or address of the registered 
proprietor of a trade -mark; or  
(b) enter any change in the name 
or address of the pers on who is 
registered as proprietor of a 
trade -mark; or  
(c) cancel the entry of a trade -
mark on the register; or  
(d) strike out any goods or 
classes of goods from those for 
which a trade -mark is registered; 
or 
(e) enter a disclaimer or 
memorandum relating t o a trade -
mark which does not in any way 
extend the rights given by the 
existing registration of such 
trade -mark.  
Any decision of the Registrar under this section shall be subject 
to appeal to the court.  
Entry in register of assignments  
32.-(1) Where a per son becomes entitled by assignment., 
transmission or other operation of law to a registered trade -
mark, he shall make application to the Registrar to register his 
title and the Registrar shall, on receipt of such application and 
on proof of title to his sa tisfaction, register him as the 
proprietor of the trade -mark and shall cause an entry to be 
made in the prescribed manner on the register of the 
assignment, transmission or other instrument affecting the title. Any decision of the Registrar under this sect ion shall be subject 
to appeal to the court.  
(2) Except in cases of appeals under this section and 
applications made under section 34, a document or instrument 
in respect of which no entry has been made in the register in 
accordance with the provisions of subsection (1) shall not be 
admitted in evidence in any court in proof of the title to a trade -
mark unless the court otherwise directs.  
Application to alter registered trade -mark  
33. The registered proprietor of any trad e-mark may apply in 
the prescribed manner to the Registrar for leave to add to or 
alter such trade -mark in any manner not substantially affecting 
the identity of the same and the Registrar may refuse such leave 
or may grant the same on such terms and subje ct to such 
limitations as to mode or place of user as he may think fit, but 
any such refusal or conditional permission shall be subject to 
appeal to the court. If leave be granted the trade -mark as altered 
shall be advertised in the prescribed manner.  
Rectification of register by the court  
34. Subject to the provisions of this Act - 
(a) the court may, on the 
application in the prescribed 
manner of any person aggrieved 
by the non -insertion in or 
omission from the register of any 
entry or by any entry made in the 
register without sufficient cause 
or by any entry wrongly 
remaining on the register or by 
any error or defect in any entry in 
the register, make such order for 
making, expunging or varying 
such entry as it may think fit;  
(b) the court may in any 
procee ding under this section 
decide any question that it may 
be necessary or expedient to 
decide in connexion with the 
rectification of the register;  
(c) in case of fraud in the 
registration or transmission of a 
registered trade -mark the Registrar may himself a pply to 
the court under the provisions of 
this section;  
(d) any order of the court 
rectifying the register shall direct 
that notice of the rectification 
shall be served in the prescribed 
manner upon the Registrar, who 
shall, upon receipt of such notice, 
rectify the register accordingly.  
Trade -marks registered under previous enactments  
35. No trade -mark which is upon the register at the 
commencement of this Act and which under this Act is a 
registrable trade -mark shall be removed from the register on the 
ground that it was not registrable under the Act in force at the 
date of its registration. But nothing in this section contained 
shall subject any person to any liability in respect of any act or 
thing done before the commencement of this Act to which he 
woul d not have been subject under the Act then in force.  
Non-user of trade -mark  
36. A registered trade -mark may, on the application to the court 
of any person aggrieved, be taken off the register in respect of 
any of the goods for which it is registered on the  ground that it 
was registered by the proprietor or a predecessor in title without 
any bona fide intention to use the same in connexion with such 
goods and there has in fact been no bona fide user of the same 
in connexion therewith, or on the ground that t here has been no 
bona fide user of such trade -mark in connexion with such 
goods during the five years immediately preceding the 
application, unless in either case such non -user is shown to be 
due to special circumstances in the trade and not to any 
intenti on not to use or to abandon such trade -mark in respect of 
such goods.  
Effect of Registration  
Powers of registered proprietor  
37. Subject to the provisions of this Act - 
(a) the person for the time being 
entered in the register as 
proprietor of a trade -mark shall, 
subject to any rights appearing 
from such register to be vested in any other person, have power to 
assign the same and to give 
effectual receipts for any 
consideration for such 
assignment;  
(b) any equities in respect of a 
trade -mark may be enforced in 
like manner as in respect of any 
other personal property.  
Rights of proprietor of trade -mark  
38. Subject to the provisions of section 40 and to any 
limitations and conditions entered upon the register, the 
registration of a person as proprietor of a tra de-mark shall, if 
valid, give to such person the exclusive right to the use of such 
trade -mark upon or in connexion with the goods in respect of 
which it is registered:  
Provided always that where two or more persons are registered 
proprietors of the same o r substantially the same trade -mark in 
respect of the same goods, no rights of exclusive user of such 
trade -mark shall, except so far as their respective rights shall 
have been defined by the court, be acquired by any one of such 
persons as against any oth er by the registration thereof, but 
each of such persons shall otherwise have the same rights as if 
he were the sole registered proprietor thereof.  
Registration to be prima facie evidence of validity  
39. In all legal proceedings relating to a registered trade -mark 
including applications under section 34, the fact that a person is 
registered as proprietor of such trade -mark shall be prima facie 
evidence of the validity of the original registration of such 
trade -mark and of all subsequent assignments and 
transmissions of the same.  
Registration to be conclusive after seven years  
40. In all legal proceedings relating to a registered trade -mark 
including applications under section 34, the original registration 
of su ch trade -mark shall. after the expiration of seven years 
from the date of such original registration or seven years from 
the commencement of this Act, whichever shall last happen, be 
taken to be valid in all respects unless such original registration 
was o btained by fraud or unless the trade -mark offends against 
the provisions of section 10: Provided that nothing in this Act shall entitle the proprietor of a 
registered trade -mark to interfere with or restrain the user by 
any person of a similar trade -mark u pon or in connexion with 
goods upon or in connexion with which such person has by 
himself or his predecessors in business continuously used such 
trade -mark from a date anterior to the user or registration, 
whichever is the earlier, of the first -mentioned t rade-mark by 
the proprietor thereof or his predecessors in business, or to 
object, on such user being proved, to such person being put 
upon the register for such similar trade -mark in respect of such 
goods under the provisions of section 20. 
No protection for unregistered trade -marks  
41. No person shall be entitled to institute any proceedings to 
prevent or to recover damages for the infringement of an 
unregistered trade -mark unless such trade -mark was in use 
before the twenty -second day of April, 1886, and  has been 
refused registration under this Act. The Registrar may on 
request grant a certificate that such registration has been 
refused.  
Action for infringement  
42. In any acti on or proceeding relating to a trade -mark or trade 
name the tribunal shall admit evidence of the usages of the 
trade concerned and of any relevant trade -mark or trade name 
or get -up legitimately used by other persons.  
No interference with bona fide user of  name or description of 
goods  
43. No registration under Act shall interfere with any bona fide 
use by a person of his own name or place of business of that of 
any of his predecessors in business or the use by any person of 
any bona fide description of the character or quality of his 
goods.  
Action for passing off goods  
44. Nothing in this Act contained shall be deemed to affect 
rights of action against any person for passing off goods as 
those of another person or the remedies in respect thereof.  
Legal Proce edings  
Certificates of validity  
45. In any legal proceedings in which the validity of the 
registration of a registered trade -mark comes into question and is decided in favour of the proprietor of such trade -mark, the 
court may certify the same and, if it s o certifies, then in any 
subsequent legal proceeding in which such validity comes into 
question the proprietor of the said trade -mark on obtaining a 
final order or judgment in his favour shall have his full costs, 
charges and expenses as between barrister and solicitor and 
client unless in such subsequent proceeding the court certifies 
that he ought not to have the same.  
Procedure before court  
46. In any legal proceeding in which the relief sought includes 
alteration or rectification of the register the Reg istrar shall have 
the right to appear and be heard and shall appear if so directed 
by the court. Unless otherwise directed by the court the 
Registrar in lieu of appearing and being heard may submit to 
the court a statement in writing signed by him giving 
particulars of the proceedings before him in relation to the 
matter in issue or of the grounds of any decision given by him 
affecting the same or of the practice of the office in like cases 
or of such other matters relevant to the issues and within his 
know ledge as such Registrar as he shall think fit, and such 
statement shall be deemed to form part of the evidence in the 
proceeding.  
Costs  
Costs  
47. In all proceedings before the court under this Act, the costs 
of the Registrar shall be in the discretion of t he court, but the 
Registrar shall not be ordered to pay the costs of any other of 
the parties.  
Evidence  
Evidence  
48.-(1) In any proceeding under this Act before the Registrar 
the evidence shall be given by statutory declaration in the 
absence of directions  to the contrary, but in any case in which 
he shall think it right so to do the Registrar may, with the 
consent of the parties, take evidence viva voce in lieu of or in 
addition to evidence by declaration. Any such statutory 
declaration may, in the case of  appeal, be used before the court 
in lieu of evidence by affidavit but if so used shall have all the 
incidents and consequences of evidence by affidavit.  
(2) In case any part of the evidence is taken viva voce, the 
Registrar shall, in respect of requiring the attendance of witnesses and taking evidence on oath, be in the same position 
in all respects as a magistrate.  
(3) Printed or written copies or extracts of or from the register 
purporting to be certified by the Registrar and sealed with his 
seal shall b e admitted in evidence in all proceedings without 
further proof or production of the originals.  
Certificate of registration to be prima facie evidence  
49. A certificate purporting to be under the hand of the 
Registrar as to any entry, matter or thing which  he is authorised 
by this Act or rules made thereunder to make or do shall be 
prima facie evidence of the entry having been made and of the 
contents thereof and of the matter or thing having been done or 
not done.  
Powers and Duties of Registrar of Trade -Marks 
Exercise of discretionary power by Registrar  
50. Where any discretionary or other power is given to the 
Registrar by this Act or rules made thereunder, he shall not 
exercise that power adversely to the applicant for registration or 
the registered propr ietor of the trade -mark in question without, 
if duly required so to do within the prescribed time, giving such 
applicant or registered proprietor an opportunity of being heard.  
Agents  
51. Where by this Act any act has to be done by or to any 
person in conn exion with a trade -mark or proposed trade -mark 
or any procedure relating thereto, such act may, under and in 
accordance with rules made under this Act or in particular cases 
by special leave of the court, be done by or to an agent of such 
party duly author ised in the prescribed manner.  
Power to make rules  
52. Subject to the provisions of this Act the Registrar may from 
time to time make such rules, prescribe such forms and 
generally do such things as he may think expedient - 
(a) for regulating the practice 
under this Act;  
(b) for classifying goods for the 
purposes of registration of trade -
marks;  (c) for making or requiring 
duplicates of trade -marks and 
other documents;  
(d) for securing and regulating 
the publishing and selling o r 
distributing in such manner as the 
Registrar thinks fit of copies of 
trade -marks and other 
documents;  
(e) generally for regulating the 
business of the office in relation 
to trademarks and all things by 
this Act placed under the 
direction or control of th e 
Registrar.  
(Section amended by 37 of 1966, 
s. 63.)  
Fees  
Fees  
53. There shall be paid in respect of applications and 
registration and other matters under this Act such fees as may 
be prescribed by the Minister.  
Offences  
Offences  
54.-(1) If any person make s or causes to be made a false entry 
in the register kept under this Act or a writing falsely 
purporting to be a copy of an entry in any such register or 
produces or tenders or causes to be produced or tendered in 
evidence any such writing knowing the entr y or writing to be 
false, he shall be guilty of a misdemeanour.  
(2) Any person who represents a trade -mark as registered 
which is not so shall be liable for every offence to a fine not 
exceeding ten dollars.  
A person shall be deemed for the purposes of thi s enactment to 
represent that a trade -mark is registered if he uses in connexion 
with the trade -mark the word "registered" or any words 
expressing or implying that registration has been obtained for 
the trade -mark.  
(Amended by 2 of 1945, s. 97.)  PART III -UNITED KINGDOM TRADE -MARKS  
Registration of United Kingdom trade -marks  
55. Any person being the registered proprietor of a trade -mark 
registered in the United Kingdom under the Trade Marks Acts 
1905 to 1919 or any Act amending or substituted for those Acts 
or any person deriving his right from such registered proprietor 
by assignment, transmission or other operation of law may 
apply at any time during the existence of the registration in the 
United Kingdom to have such trade -mark registered in Fiji.  
Form of a pplication  
56. An application for registration of a trade -mark under this 
Act shall be made to the Registrar and accompanied by a 
certified representation of the trademark and a certificate of the 
Comptroller - General of the United Kingdom Patent Office 
giving full particulars of the registration of the trade -mark in 
the United Kingdom.  
Certificate to issue  
57. Upon such application being lodged together with the 
documents mentioned in section 56, the Registrar shall issue a 
certificate of registration.  
Effect of certificate  
58. Such certificate of registration shall confer on the applicant 
privileges and rights subject to all conditions established by law 
of Fiji as though the certificate of registration in the United 
Kingdom had been issued with an extensi on to Fiji.  
Date of registration  
59. Privileges and rights so granted shall date from the date of 
registration in the United Kingdom and shall continue in force 
only so long as the registration in the United Kingdom remains 
in force:  
Provided that no actio n for infringement of the trade -mark shall 
be entertained in respect of any use of the trade -mark prior to 
the date of issue of the certificate of registration in Fiji.  
Passing off  
60. Nothing in this Act shall be deemed to affect rights of 
action against any person for passing off goods as those of 
another person or the remedies in respect thereof.  Power of court  
61. The court shall have power upon the application of any 
person who alleges that his interests have been prejudicially 
affected by the is sue of a certificate of registration to declare 
that the exclusive privileges and rights conferred by such 
certificate have not been acquired on any of the grounds upon 
which the United Kingdom registration might be cancelled 
under the law for the time bei ng in force in the United 
Kingdom.  
Assignment  
62. A trade -mark when registered under this Act shall be 
assigned and transmitted only in connexion with the goodwill 
of the business concerned in the goods for which it has been 
registered and shall be determi ned with that goodwill.  
Assignee to be entered as proprietor  
63. Subject to the provisions of this Act where a person 
becomes entitled by assignment, transmission or other 
operation of law to the privileges and rights conferred by a 
certificate of registra tion issued under this Act, the Registrar 
shall, on application being made in the prescribed manner and 
on proof of title to his satisfaction, cause the name and address 
of such person to be entered on the register as proprietor of the 
trade -mark.  
Renewals  
64. All renewals of the registration in the United Kingdom of a 
trade -mark registered under this Act shall be notified to the 
Registrar who shall, on sufficient evidence thereof and on 
payment of the prescribed fee, enter the same in the register in 
the p rescribed manner.  
Powers of Registrar  
65. The Registrar may on request in writing made by the 
registered proprietor and on payment of the prescribed fee  
(a) cancel the registration of a 
trade -mark either wholly or in 
respect of any particular goods in 
connexion with which the trade -
mark is registered;  
(b) correct any clerical error in or 
in connexion with any application under this Act or in any matter 
which  is entered upon the 
register;  
(c) enter in the register any 
change in the name or address of 
the person who is registered as 
proprietor of a trade -mark.  
Saving  
66. Every rule, table of fees or classification of goods made 
under the *Trade and Merchandise Marks Ordinance 1886 and 
in force at the commencement of this Act shall continue in 
force as if made under this Act until superseded by rules, table 
of fees or classification under this Act.  
—————————————————————————
————————  
* Repealed by this Act.  
Control led by Ministry of the Attorney -General  
CHAPTER 240  
TRADE -MARKS  
SECTION 52 -TRADE -MARKS RULES  
Rules 6 Oct., 1886 [in force 14 Dec., 1886], 14 Nov., 1958,  
10 Oct., 1967, 10 Nov., 1969, 25 Nov., 1974, 12 Nov., 1976, 31 
Aug., 1984.  
*Made by the Chief Justice w ith the approval of the Legislative 
Council  
Short title  
1. These Rules may be cited as the Trade -Marks Rules.  
Fees  
2. The fees specified in the First Schedule shall be payable to 
the Administrator -General.  
Application for registration  
3. Any person desiring to register a trade -mark shall make 
application to the Administrator -General in the form of the 
Second Schedule. The application to be on foolscap paper having a margin on the left -hand of not less than one -inch-and-
a-half. 
Nature and  size of representation of trade -mark  
4. A description of a trade -mark shall be given, and shall be 
accompanied when practicable by a drawing or other 
representation, in duplicate, not more than three inches square, 
on foolscap paper, by pasting or otherwi se fastening on such 
paper a specimen of the trade -mark.  
When a drawing or other representation or specimen cannot be 
given in a manner aforesaid, a specimen or copy of the trade -
mark may be sent either of full size or on a reduced scale. The 
Administrator -General may, if dissatisfied with the drawing or 
other representation of a trade -mark, require a fresh drawing or 
other representation, either before he proceeds with the 
application or before he registers the trade -mark.  
The Administrator -General may als o, in exceptional cases, 
receive and keep in his office a specimen or copy of any trade -
mark which cannot conveniently be placed on his register.  
Advertisement of trade -mark application  
5. As soon as may be after the receipt of an application, the 
Administ rator -General shall require the applicant to advertise 
such application in the Gazette, and in such other newspaper as 
the Administrator -General may, if he think necessary, direct, 
during such time, in such form, and generally in such manner 
as the Adminis trator -General may determine.  
*Made under the provisions of section 14 of the Trade and 
Merchandise Marks Ordinance, 1886 and continued in force by 
the Trade -Marks Act. (See section 67 of Cap. 89 of 1955 
Edition.)  
Means of advertising trade -mark to be supp lied 
6. For the purposes of such advertisement the applicant may be 
required to furnish the Government Printer, and the printer of 
such other newspaper, with a wood block or electrotype of the 
trade -mark of such dimensions or with such information or 
means  of advertising the trade -mark as may be determined by 
the Administrator -General.  
Notice and proceedings for objection  
7. Notice of objection to any application may be given within 
three months of the publication of such advertisement to the Administrator -General by sending the same in duplicate on 
foolscap paper, stating the grounds of the objection. The 
Administrator -General shall send one copy of such notice to the 
applicant.  
Within three weeks after receipt of such notice, or such further 
time as the Ad ministrator -General may allow, the applicant 
may send to the Administrator -General a counter statement on 
foolscap paper, and if he fails to do so his application shall be 
deemed to be withdrawn.  
The Administrator -General, after hearing the applicant and 
objector may order costs to be paid by either of them as he may 
think fit.  
Time of registration of trade -mark  
8. On the expiration of three months from the date of the first 
appearance of the advertisement in the Gazette, the 
Administrator - General may, if he is satisfied that the applicant 
is entitled to registration, register the trade -mark in respect of 
the description of goods for which he may be entitled to be 
registered, and the applicant as the proprietor thereof.  
Date of registration  
9. When a trade -mark shall be registered, the date on which the 
application for registration was received by the Administrator -
General shall be deemed to be the date of registration.  
Assignment  
10. When a trade -mark has been assigned any person claiming 
to be registered a s assignee shall send to the Administrator -
General an application in the form of the Third Schedule, and 
shall forward therewith an assignment by deed duly executed.  
Transmission  
11. When a trade -mark is transmitted by operation of law, the 
person applying  to be registered as the transmittee shall send to 
the Administrator -General an application in the form in the 
Third Schedule, and shall produce to the Administrator -General 
such evidence as he may desire in support of such application.  
Removal of trade -mark after fourteen years unless fee paid  
12. At the expiration of fourteen years from the date of 
registration, or within six months thereafter, unless the fees 
prescribed for continuance be paid, the trade -mark may be removed from the register.  
(Substituted by Legal Notice No. 83 of. 1984.)  
Payment of additional fee after expiration of fourteen years  
13. If before the expiration of the said six months the registered 
proprietor pays the said fees together with the additional 
prescribed fee, the Ad ministrator -General may, without 
removing such trade -mark from the register, accept the said fee 
as if it had been paid before the expiration of the said fourteen 
years.  
(Substituted by Legal Notice No. 83 of 1984.)  
Power of Administrator -General to restor e trade -mark  
14. When a trade -mark has been so removed from the register, 
the Administrator -General may, if he is satisfied that it is just 
so to do, restore such trade -mark to the register on payment of 
the additional fee prescribed and compliance with such 
conditions as he may think fit.  
Publication of rectification or alteration of register  
15. Whenever the register is rectified or altered in any  
particular, the Administrator -General shall, if he consider that 
such rectification or alteration should be made public, publish 
at the expense of any person interested, by advertisement or 
otherwise, the circumstances attending such rectification or 
alteration.  
Notice to Administrator -General of opposition in any matter  
16. When any person objects to the registration of any assignee 
or transmittee, or to any rectification or alteration of the 
register, the Administrator -General shall give to the applicant  
or his agent for such registration, rectification, or alteration, the 
like notice. The Administrator -General in such case may, if he 
think fit, require the parties interested to submit their claims to 
the Supreme Court.  
Submission to Court of conflicting claims  
17. Where the Administrator -General refuses to comply with 
the claims of any persons until their rights have been 
determined by the Supreme Court, the manner in which the 
rights of such claimants may be submitted to the Supreme 
Court by the Administ rator -General, or by the claimants, if the 
Administrator -General so require, shall, unless the Court 
otherwise order, be by a special case or statement of questions 
of fact without pleadings, and the same shall be filed and proceeded with in like manner as  in the case of any other 
special case or statement of questions of fact without pleadings 
submitted to the Supreme Court.  
Administrator -General may settle case  
18. The special case or statement of questions of fact may be 
agreed to by the parties, and, if  they differ, may be settled by 
the Administrator -General.  
Service of documents  
19. Applications, statements, notices, and documents, required 
by these Rules to be served or sent, shall be in writing or print, 
or partly in writing and partly in print, and may be delivered 
personally or sent by post, and if sent by post shall be deemed 
to have been served and received respectively at the time when 
the letter containing the same would be delivered in the 
ordinary course of post; and in proving such service or  sending 
it shall be sufficient to prove that the letter containing the 
notice was prepaid, duly stamped, and put into the post 
properly stamped.  
Extension of time  
20. Where the Administrator -General is satisfied that the 
circumstances are such as to justi fy an extension of time for 
doing any act or taking any proceeding under the provisions of 
these Rules, not being a time expressly provided in the Act or 
prescribed in rules 12 and 13, he may extend the time upon 
such notice to the parties and upon such te rms as he may direct, 
and the extension may be granted although the time for doing 
the act or taking the proceedings has expired.  
(Inserted by Rules 10 October, 1967.)  
Address for service  
21. The Administrator -General may require an applicant, 
opponent or agent, or a registered proprietor or registered user 
of a trade -mark, who does not reside or carry on business 
within Fiji to give an address for service within Fiji and such 
address shall be treated as the actual address of that person for 
all purposes co nnected with the matter in question.  
(Inserted by Rules 10 November, 1969.)  
 
FIRST SCHEDULE  
(RULE 2)  (Substituted by Rules 25 November, 1974.)  
FEES  
The following fees shall be payable to the Administrator -
General on or for the following  
occasions or purpo ses:- 
………………………………………………          $ .. c  
1. On application to register trade -mark for one or more articles  
…………… 5.00  
2. For registration of a trade -mark  
………………………………………… 10.00  
3. Where the same person is registered at the same time for 
more than one tra de-mark, for registration of each additional 
trade -mark after the first  ………………………… 5.00  
4. For entering notice of objection, for each trademark  
…………………………10.00  
5. For registering subsequent proprietor, for each trade -mark - 
if made within six months after  acquisition of 
proprietorship  
……………………………………………… 5.00  
if made after six months but within twelve months after 
acquisition of proprietorship  
……………………………………………… 6.00  
if made twelve months or more after acquisition of 
proprietorship  
……………………………………………… 8.0 0 
6. For altering address on the register  
……………………………………………… 2.00  
7. For every entry in the register of a rectification thereof, or an 
alteration therein not otherwise charged  
……………………………………………… 5.00  
8. For continuance of trade -mark on or before day of expiration 
of seven years  ……………………………………………… 
10.00  
9. Additional fee where fee is paid within six months after 
expiration of seven years  
……………………………………………… 10.00  10. Additional fee for restoration of t rade-mark when removed 
for non -payment of fee  
……………………………………………… 15.00  
11. For certificate for each trade -mark  
……………………………………………… 2.00  
12. For inspecting register 
……………………………………………… .50  
13. For office copy of documents, per folio of seventy -two (72) 
word s  ……………………………………………… 1.00  
14. Settling a special case  
………………………………………………10.00  
15. For a sketch of copy of a trade -mark, such fee as may be 
determined in each case by the Administrator -General  
16. For registration of a series of trade -marks - 
for the first  mark  
………………………………………………10.00  
for every other mark of the series  
……………………………… 4.00  
17. On lodging application for registration of registered user  
…………………… 5.00  
18. On application to lodge further evidence in opposition 
proceedings .…………5.00  
19. On lodgi ng request to the Registrar for statement of 
grounds upon which his decision has been made  
………………………………………………5.00  
20. For photographic copies of, or extracts from, the register or 
other documents -per sheet 
……………………………………………… .25  
21. For certification of a ny document  
………………………………………………1.00  
22. On lodging application for extension of time -for each 
month or part of the month  
applied for  ……………………………………………… 1.00  
23. On lodging declarations in opposition proceedings -for each 
declaration ………………………………… 1.00   
SECOND SCHEDULE  
(RULE 3)  
I, [here insert name, address, and calling of applicant ] apply to 
be registered as proprietor of a trade -mark [ here insert in 
writing description of trade -mark ] and which is represented in 
the paper annexed hereto.  
I desire that the said trade -mark may be registered in respect of 
the description of goods following, that is to say: -[here insert 
description of the goods which the applicant desires to 
register ]. 
Signature  
Witness - 
 
THIRD SCHEDULE  
(RULES 10 AND 11)  
APPLICATION BY [ assignee or transmittee ] TO BE 
REGISTERED AS PROPRIETOR  
Trade -mark No.:  
Name of Owner:  
Firm:  
Place of business:  
1. I, [ here insert name, address, and calling of person making 
this application ] of ................................................... hereby 
apply to be registered as proprietor of the above -described 
trade -mark as [ here state representative or other capacity of 
applicant ] of [ name of owner ] the above -named registered 
owner; and I produce herewith the [ state nature of document or 
instrument produced in proof of capacity of applicant ] in 
support of this application.  
2. And I state that I am lawfully entitled to the goodwill of the 
business concerned in the goods with respect to which  the 
trade -marks so transmitted to me is registered.  Dated this...................... day of .....................19.............  
Signature  
Witness - 
---------------------------------------  
Controlled by Ministry of the Attorney -General