WORLD TRADE ORGANIZATION
ORGANISATION MONDIALE DU COMMERCE
ORGANIZACIÓN MUNDIAL DEL COMERCIOIP/N/1/GRD/I/3
17 July 2002
(02-3973)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal: English/
anglais/
inglés
MAIN DEDICATED INTELLECTUAL PROPERTY
LAWS AND REGULATIONS NOTIFIED UNDER
ARTICLE 63.2 OF THE AGREEMENT
GRENADA
The present document reproduces the text1of the Industrial Property Bill 2002, which has been notified by
Grenada in addition to its initial notification under Article 63.2 of the Agreement, by a communication dated 13 June 2002.
The Bill, once adopted, will repeal the Patents Act (CAP. 227) (distributed in document IP/N/1/GRD/P/1); the Patents Rules;
the Registration of United Kingdom Patents Act (Cap. 283) (distributed in document IP/N/1/GRD/P/2); the Registration of
United Kingdom Patents Rules; the Registration of United Kingdom Trade Marks Act (Cap. 284) (distributed in document
IP/N/1/GRD/I/2); and the Registration of United Kingdom Trade Marks Rules.
Conseil des aspects des droits de propriété
intellectuelle qui touchent au commerce
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE
DE L'ARTICLE 63:2 DE L'ACCORD
GRENADE
Le présent document contient le texte1du projet de loi sur la propriété industrielle de 2002, notifié par la Grenade
par une communication datée du 13 juin 2002, qui s'ajoute à sa notification initiale au titre de l'article 63:2 de l'Accord. Une
fois adoptée, la loi abrogera la Loi sur les brevets (CAP. 227) (qui figure dans le document IP/N/1/GRD/P/1); le Règlement
sur les brevets; la Loi relative à l'enregistrement des brevets du Royaume-Uni (CAP. 283) (qui figure dans le document
IP/N/1/GRD/P/2); le Règlement relatif à l'enregistrement des brevets du Royaume-Uni; la Loi relative à l'enregistrement
des marques de fabrique ou de commerce du Royaume-Uni (CAP. 284) (qui figure dans le document IP/N/1/GRD/I/2); et le
Règlement relatif à l'enregistrement des marques de fabrique ou de commerce du Royaume-Uni.
Consejo de los Aspectos de los Derechos de Propiedad
Intelectual relacionados con el Comercio
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD
INTELECTUAL NOTIFICADOS EN VIRTUD DEL PÁRRAFO 2
DEL ARTÍCULO 63 DEL ACUERDO
GRANADA
En el presente documento se reproduce el texto1de la Ley de Propiedad Industrial 2002, notificado por Granada
además de su notificación inicial de conformidad con lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo, mediante una
comunicación de fecha 13 de junio de 2002. La Ley, una vez sancionada, derogará la Ley de Patentes (CAP. 227)
(distribuida en el documento IP/N/1/GRD/P/1); las Normas sobre Patentes; la Ley de Registro de Patentes del Reino Unido
(Cap. 283) (distribuida en el documento IP/N/1/GRD/P/2); las Normas sobre el Registro de Patentes del Reino Unido;
la Ley de Registro de Marcas de Fábrica o de Comercio del Reino Unido (Cap. 284) (distribuida en el documento
IP/N/1/GRD/I/2), y las Normas sobre el Registro de Marcas de Fábrica o de Comercio del Reino Unido.
1In English only./En anglais seulement./En inglés solamente.IP/N/1/GRD/I/3
Page 2
GRENADA
A
BILL
FOR
AN ACT to provide protection for patents, industrial designs, marks and trade marks in Grenada, and
for related matters.
ENACTED by the Parliament of Grenada -
PART I - PRELIMINARY
Short title 1. This Act may be cited as the
INDUSTRIAL PROPERTY ACT 2002.
Interpretation 2. In this Act, unless the context otherwise requires –
“appraisal period means ___;
“court” means the court referred to in section [49];
“international classification” means, as regards industrial
designs, the classification according to the Locarno Agreement
Establishing an International Classification for Industrial
Designs of October 8, 1968, as last revised, and, as regards
marks, the classification according to the Nice Agreement
Concerning the Industrial Classification of Goods and Services
for the Purposes of the Registration of Marks of June 15, 1957,
as last revised;
“Minister” means the [Minister of Legal Affairs];IP/N/1/GRD/I/3
Page 3
“Paris Convention” means the Paris Convention for the Protection of
Industrial Property of March 20, 1883, as last revised;
“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 kept pursuant to section [46];
“Registrar” means the [Registrar of the Supreme Court];
“Registry” means [the Industrial Property] Registry established under
section [45];
“regulations” means regulations made under section [52].
PART II - PATENTS
Definitions of 3. (1) For the purposes of this Act, a “patent” means the title granted to
“patent” and protect an invention.
“invention”
(2) (a) For the purposes of this Act, “invention” means an idea of
an inventor which permits in practice the solution to a
specific problem in the field of technology.
(b) An invention may be, or may relate to, a product or a
process.
(3) The following, even if they are inventions, are excluded from
patentability -
(a) a discovery, scientific theory or mathematical method;IP/N/1/GRD/I/3
Page 4
(b) a scheme, rule or method for performing a mental act,
playing a game or doing business;
(c) diagnostic, therapeutic and surgical methods for the
treatment of humans or animals, and products for use in any
of those methods.
Patentable 4. (1) A patent may be granted only for an invention which -
inventions
(a) is new;
(b) involves an inventive step; and
(c) is capable of industrial application.
(2) (a) An invention is new if it is not anticipated by prior art.
(b) Prior art consists of everything disclosed to the public,
anywhere in the world, by publication in tangible form or by
oral disclosure, by use or in any other way, prior to the filing
or, where appropriate, the priority date, of the application
claiming the invention.
(c) For the purposes of paragraph (b), disclosure to the public of
the invention will not be taken into consideration if such
disclosure occurred within 12 months preceding the filing
date or, where applicable, the priority date of the application,
and the disclosure was due to or in consequence of -
(i) acts committed by the applicant or the applicant’s
predecessor in title; or
(ii) an abuse committed by a third party with regard to
the applicant or the applicant’s predecessor in title.IP/N/1/GRD/I/3
Page 5
(3) An invention involves an inventive step if, having regard to the prior
art relevant to the application claiming the invention and as defined in
subsection (2)(b), it is not obvious to a person having ordinary skill in the art.
(4) An invention is industrially applicable if it can be made or used in any
kind of industry in its broadest sense, including handicraft, agriculture,
fishery and services.
(5) Inventions the commercial exploitation of which would be contrary to
public order or morality are not patentable.
Right to patent; 5. (1) The right to a patent belongs to the inventor.
naming of
inventor (2) Where 2 or more persons have jointly made an invention, the right to
the patent belongs to them jointly.
(3) Where and to the extent to which 2 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, has the right to the patent, as long as the application is not
withdrawn, abandoned or rejected.
(4) The right to a patent may be assigned, or may be transferred by
succession.
(5) If an invention is made in execution of an employment contract, the
right to the patent belongs, in the absence of contractual provisions to the
contrary, to the employer.
(6) The inventor must be named as such in the patent, unless in a special
written declaration signed by the inventor and addressed to the Registrar the
inventor indicates that he or she wishes not to be named. Any promise or
undertaking by the inventor made to any person to the effect that the inventor
will make such a declaration is of no legal effect.IP/N/1/GRD/I/3
Page 6
Application for 6. (1) An application for a patent must be filed with the Registrar and be
a patent accompanied by the prescribed application fee.
(2) An application for a patent must contain -
(a) a request for the grant of the patent;
(b) a description of the invention;
(c) one or more claims and any drawings referred to in the
description or any claim;
(d) an abstract.
(3) (a) The request must contain a petition to the effect that a patent
be granted, the name of and other prescribed information
concerning the applicant, the inventor and the agent, if any,
and the title of the invention.
(b) If the applicant is not the inventor, the request must be
accompanied by a statement justifying the applicant’s right to
the patent.
(4) The description must disclose the invention in a manner which is clear
and complete enough for the invention to be carried out by a person having
ordinary skill in the art, and must, in particular, indicate at least one mode
known to the applicant for carrying out the invention.
(5) The claim or claims must –
(a) define the matter for which protection is sought;
(b) be clear and concise;IP/N/1/GRD/I/3
Page 7
(c) be fully supported by the description.
(6) Drawings must be provided if they are necessary for the understanding
of the invention.
(7) The description and the drawings may be used to interpret the claim.
(8) The purpose of the abstract is to give technical information and it must
not be taken into account for the purpose of interpreting the scope of the
protection.
(9) The applicant may, up to the time when the application is in order for
grant, withdraw the application at any time during its pendency.
Unity of 7. (1) The application must relate to one invention only or to a group of
invention; inventions so linked as to form a single general inventive concept.
amendment
anddivision of (2) The applicant may, up to the time when the application is in order
application for grant, amend the application, but the amendment must not go beyond the
disclosure in the initial application.
(3) (a) The applicant may, up to the time when the application is in
order for grant, divide the application into two or more
applications (“divisional application”), but each divisional
application must not go beyond the disclosure in the initial
application.
(b) Each divisional application is entitled to the filing date and,
where applicable, the priority date of the initial application.
(4) The fact that a patent has been granted on an application that did not
comply with the requirement of unity of invention under subsection (1) is not
a ground for the invalidation of the patent.IP/N/1/GRD/I/3
Page 8
Rights of 8. (1) A patent application may contain a declaration claiming the priority,
priority as provided for in the Paris Convention, of one or more earlier national,
regional or international applications filed by the applicant or the applicant’s
predecessor in title in or for any State party to that Convention [or any
Member of the World Trade Organisation].
(2) If the application contains a declaration under subsection (1), the
Registrar may require the applicant to furnish, within a specified time, a copy
of the earlier application certified as correct by the registry with which it was
filed.
(3) The effect of a declaration under subsection (1) is as provided in the
Paris Convention.
(4) If the Registrar finds that the requirements under this section and the
relevant regulations have not been fulfilled, the declaration is invalid.
Information 9. (1) The applicant must upon request furnish the Registrar with the date
Concerning and number of any application for a patent filed by the applicant abroad
corresponding (“foreign application”) relating to the same or essentially the same
foreign invention as that claimed in the application filed with the registry.
applications for
patents (2) The applicant must, upon request, furnish the Registrar with the
following documents relating to any of the foreign applications referred to in
subsection (1) -
(a) 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;
(b) a copy of the patent granted on the basis of the foreign
application;IP/N/1/GRD/I/3
Page 9
(c) a copy of any final decision rejecting the foreign application
or refusing the grant requested in the foreign application;
(d) a copy of any final decision invalidating the patent granted
on the basis of the foreign application referred to in
subsection (1).
Filing date; 10. (1) The Registrar must accord the date of receipt of the application as
examination the filing date if, at the time of receipt, the application contains -
(a) an express or implicit indication that the granting of a patent
is sought;
(b) indications allowing the identity of the applicant to be
established; and
(c) a part which on the face of it appears to be a description of an
invention.
(2) If the Registrar finds that the application did not, at the time of receipt,
fulfill the requirements of subsection (1), he or she must invite the applicant
to file the required correction and must accord as the filing date the date of
receipt of the required correction, but if no correction is made, the application
must be treated as if it had not been filed.
(3) If the application refers to drawings which are not included in the
application, the Registrar must invite the applicant to provide the missing
drawings.
(4) If the applicant complies with the invitation referred to in subsection
(3), the Registrar must accord as the filing date the date of receipt of the
missing drawings. Otherwise, the Registrar must accord as the filing date the
date of receipt of the application and treat any reference to the drawings as
non-existent.IP/N/1/GRD/I/3
Page 10
(5) After according a filing date, the Registrar must examine -
(a) whether the application complies with the requirements of
section [6] (1) to (3) and the relevant regulations and any
requirements of this Act and the regulations which are
designated by the regulations as formal requirements for the
purposes of this Act;
(b) whether any information requested under section [9], has
been provided.
(6) If the Registrar is of the opinion that the application complies with the
requirements of subsection (5), the Registrar must take a decision as to
whether the requirements of sections [3](2) and (3), [4], [6](4), (5) and (6)
and [7] and the relevant regulations are fulfilled and for this purpose may, as
provided for in the regulations, cause the application to be examined.
(7) The Registrar must take into account, for the purposes of subsection (6) -
(a) the results of any international search report and any
international preliminary examination report established
under the Paris Convention in relation to the application;
(b) any search and examination report submitted under section
[9](2)(a) or a final decision submitted under section [9](2)(c)
relating to the patent on a corresponding foreign application;
(c) any search and examination report which was carried out
upon the Registrar’s request by an external search and
examination authority.
Grant of patent; 11. (1) If the Registrar is of the opinion that the application complies with
changes in the requirements of section [10](6), the Registrar must grant the patent.
patents Otherwise the Registrar must refuse the application and notify the applicant
of the decision.IP/N/1/GRD/I/3
Page 11
(2) If the Registrar grants a patent, the Registrar must -
(a) publish a reference to the grant of 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 available copies of the patent to the public, on payment
of the prescribed fee.
(3) The Registrar must, 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 by it, unless the change would 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.
Rights conferred 12. (1) The exploitation of the patented invention in Grenada by persons
by patent other than the owner of the patent require the agreement of the latter.
(2) For the purposes of this Act, “exploitation” of a patented invention
means any of the following -
(a) if the patent has been granted in respect of a product -
(i) making, importing, offering for sale, selling or using
the product;
(ii) stocking the product for the purposes of offering for
sale, selling or using it;IP/N/1/GRD/I/3
Page 12
(b) if the patent has been granted in respect of a process -
(i) using the process;
(ii) doing any of the acts referred to in paragraph (a) in
respect of a product obtained directly by means of
the process.
(3) The owner of the patent has, in addition to any other rights, remedies or
actions available, the right, subject to subsection (4) and section 14, to
institute court proceedings against any person who infringes the patent by
performing, without the owner’s agreement, any of the acts referred to in
subsection (2) or who performs acts which make it likely that infringement
will occur.
(4) (a) The rights under the patent do not extend -
(i) to acts in respect of articles which have been put on
the market in Grenada by the owner of the patent or
with the owner’s consent;
(ii) to the use of articles on aircraft, land vehicles or
vessels of other countries which temporarily or
accidentally enter the airspace, territory or waters of
Grenada;
(iiii) to acts done only for experimental purposes relating
to a patented invention;
(iv) 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 or was making
effective and serious preparations for such use in
Grenada.IP/N/1/GRD/I/3
Page 13
(b) The right of prior user referred to in paragraph (a)(iv) may be
transferred or devolve together with the enterprise or
business, or with that part of the enterprise or business, in
which the use or preparations for the use have been made.
Duration; 13. (1) Subject to subsection (2), a patent expires 20 years after the filing
annual fees date of the application for the patent.
(2) In order to maintain the patent or patent application, an annual fee must
be paid in advance to the Registrar for each year, starting one year after the
filing date of the application for grant of the patent. A grace period of 6
months is allowed for the late payment of the annual fee on payment of the
prescribed surcharge.
(3) If the annual fee is not paid in accordance with the provisions of this
subsection, the patent lapses.
Exploitation by 14. (1) If –
Government or
authorised (a) the public interest (in particular, national security, nutrition,
person health or the development of other vital sectors of the
national economy) so requires; or
(b) the [Minister of Finance] has determined that the manner of
exploitation by the owner of the patent or a licensee is anti-
competitive, and the Minister [for Legal Affairs] is satisfied
that the exploitation of the invention in accordance with this
subsection would remedy such practice,
the Minister [for Legal Affairs] may decide that, even without the agreement
of the owner of the patent, a Government agency or a third person designated
by the Minister may exploit the invention.
(2) The exploitation of the invention under this section is limited to the
purpose for which it was authorized and is subject to the payment to theIP/N/1/GRD/I/3
Page 14
owner of adequate remuneration, taking into account the economic value of
the Minister’s decision, as determined in the said decision, and, where a
decision has been taken under paragraph (b) of subsection (1), the need to
correct anti-competitive practices.
(3) The Minister [of Finance] and the Minister [of Legal Affairs] must take
a decision under subsection (1) only after hearing the owner of the patent and
any interested person who wishes to be heard.
(4) Upon the request of the owner of the patent, of the Government agency
or of the third person authorized to exploit the patented invention, the
Minister [of Legal Affairs] may, after hearing the parties, if either or both
wish to be heard, vary the terms of the decision authorizing the exploitation
of the patented invention to the extent that changed circumstances justify
such variation.
(5) (a) Upon the request of the owner of the patent, the Minister [of
Legal Affairs] must terminate the authorization if the
Minister is satisfied, after hearing the parties, (if either or
both wish to be heard) that the circumstances which led to
the decision have ceased to exist and are unlikely to recur or
that the Government agency or third person designated has
failed to comply with the terms of the decision.
(b) Notwithstanding paragraph (a), the Minister must not
terminate the authorization if he or she is satisfied that the
need for adequate protection of the legitimate interests of the
Government agency or third person designated justifies the
maintenance of the decision.
(6) If a third person has been designated by the Minister under subsection
(1), the authorization may only be transferred with the enterprise or business
of that person or with the part of the enterprise or business within which the
patented invention is being exploited.IP/N/1/GRD/I/3
Page 15
(7) The authorization must not exclude -
(a) the conclusion of licence contracts by the owner of the
patent;
(b) the continued exercise, by the owner of the patent, of the
rights under section [12](2); or
(c) the issue of a non-voluntary licence under subsections (1)
and (2) of section [14 A.]
(8) (a) A request for the Minister’s authorization must be
accompanied by evidence that the owner of the patent has
received, from the person seeking the authorization, a request
for a contractual licence, but that that person has been unable
to obtain such a licence on reasonable commercial terms and
conditions and within a reasonable time.
(b) Paragraph (a) of this subsection does not apply in cases of
national emergency or other circumstances of extreme
urgency, but in such cases the owner of the patent must be
notified of the Minister’s decision as soon as reasonably
practicable.
(9) The exploitation of the invention by the Government agency or third
person designated by the Minister must be predominantly for the supply of
the market in Grenada.
(10) The exploitation of an invention in the field of semi-conductor
technology can only be authorized for public non-commercial use or if a
judicial or administrative body has determined that the manner of
exploitation of the patented invention, by the owner of the patent or the
owner’s licensee, is anti-competitive and if the Minister is satisfied that the
issuance of the non-voluntary licence would remedy such practice.IP/N/1/GRD/I/3
Page 16
(11) Decisions of a Minister under any of subsections (1) to (10) may be
the subject of an appeal to the High Court.
Non-voluntary [14A. (1) If the invention claimed in a patent (“later patent”) cannot be
licences exploited in Grenada without infringing a patent granted on the basis of an
application benefiting from an earlier filing or, where appropriate, priority
date (“earlier patent”), and if the invention claimed in the later patent
involves an important technical advance of considerable economic
importance in relation to the invention claimed in the earlier patent, the
[Registrar] [Court], upon the request of the owner of the later patent, may
issue a non-voluntary licence to the extent necessary to avoid infringement of
the earlier patent.
(2) If a non-voluntary licence is issued under subsection (1), the
[Registrar] [Court], upon the request of the owner of the earlier patent, must
issue a non-voluntary licence in respect of the later patent.
(3) If a non-voluntary licence is issued under subsection (1) or (2), the
issuing authority must fix the scope and function of the licence, the amount
of the remuneration to be paid to the owner of the patent and the conditions
of payment.
(4) In the case of a non-voluntary licence issued under subsection (1), the
transfer may be made only with the later patent, or, in the case of a non-
voluntary licence issued under subsection (2), only with the earlier patent.
(5) The issue of a non-voluntary licence is subject to payment of the
prescribed fee.
(6) If a non-voluntary licence is issued under subsection (1) or (2),
subsections (2) to (8) and (10) of section [14] apply with necessary
modifications.]
Invalidation 15. (1) Any interested person may apply to the court to invalidate a patent.IP/N/1/GRD/I/3
Page 17
(2) The court must invalidate the patent if the person requesting the
invalidation proves that any of the requirements of sections [3](2) and (3), [4]
and [6](4), (5) and (6) is not fulfilled or if the owner of the patent is not the
inventor or the inventor’s successor in title.
(3) Any invalidated patent, or claim or part of a claim, is null and void
from the date of the grant of the patent.
(4) The decision of the court must be notified to the Registrar who must
record it and publish a reference to it as soon as possible.
PART III – INDUSTRIAL DESIGNS
Definition of 16. (1) For the purposes of this Act, any composition of lines or colours or
“industrial any three-dimensional form, whether or not associated with lines or
design” colours, is deemed to be an industrial design, provided that 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.
(2) The protection under this Act does not extend to anything in an
industrial design which serves solely to obtain a technical result and to the
extent that it leaves no freedom as regards arbitrary features of appearance.
Registrable 17. (1) An industrial design is registrable if it is new.
industrial
design (2) An industrial design is new if it has not been disclosed to the public
anywhere in the world -
(a) by publication in tangible form; or
(b) by use or in any other way prior to the filing date or, where
applicable, the priority date of the application for
registration.
(3) Section [4](2)(c) applies with necessary modifications to industrial
designs.IP/N/1/GRD/I/3
Page 18
(4) Industrial designs that are contrary to public order or morality are not
registrable.
Right to 18. Section [5] applies with necessary modifications to industrial designs.
registration of
design; naming
of creator
Application for 19. (1) An application for the registration of an industrial design must be
registration filed with the Registrar and be accompanied by the prescribed application
fee.
(2) An application for registration of an industrial design must contain -
(a) a request for registration of the design;
(b) drawings, photographs or other adequate graphic
representations of the article embodying the industrial
design;
(c) an indication of the kind of products for which the industrial
design is to be used.
(3) The application may be accompanied by a specimen of the article
embodying the industrial design, if the industrial design is two-dimensional.
(4) If the applicant is not the creator, the request must be accompanied by
a statement justifying the applicant’s right to the registration of the industrial
design.
(5) Section [8] applies with necessary modifications to industrial designs.IP/N/1/GRD/I/3
Page 19
(6) Two or more industrial designs may be the subject of the same
application if they relate to the same class of the International Classification
or to the same set or composition of articles.
(7) An application may contain a request that the publication of the
industrial design, upon registration, be deferred for a period not exceeding 12
months from the date of filing or, if priority is claimed, from the date of
priority, of the application.
(8) An applicant for the registration of an industrial design may withdraw
the application at any time during its pendency.
Examination, 20. (1) The Registrar must accord the date of receipt of the application as
registration and the filing date if, at the time of receipt, the application contains indications
publication of enabling the identity of the applicant to be established and the required
industrial design graphic representation of the article embodying the industrial design.
(2) Section [10](1)(b) applies with necessary modifications to industrial
designs.
(3) After according a filing date, the Registrar must examine the
application for compliance with the requirements of section [19](1) to (4) and
the relevant regulations and must examine the industrial design for
compliance with the requirements of sections [4] and [16] and the relevant
regulations.
(4) If the Registrar is satisfied that the conditions referred to in subsection
(3) are fulfilled, he or she must register the industrial design, publish a
reference to the registration and issue to the applicant a certificate of
registration of the industrial design. Otherwise, the Registrar must refuse the
application.
(5) (a) Notwithstanding subsection (4), if a request has been made
under section [19](7) for deferment of publication, upon
registration of the industrial design neither the representationIP/N/1/GRD/I/3
Page 20
of the design nor any file relating to the application is to be
open to public inspection.
(b) The Registrar must publish a notice of the deferment of the
publication of the industrial design which must contain
information identifying the registered owner, the filing date
of the application, the length of the period for which
deferment has been requested and any other particulars
prescribed.
(c) At the expiry of the period of deferment, the Registrar must
publish the registered industrial design.
(d) The institution of legal proceedings on the basis of a
registered industrial design during the period of deferment of
publication is subject to the condition that the information
contained in the register and in the file relating to the
application has been communicated to the person against
whom the action is brought.
Rights conferred 21. (1) The exploitation of a registered industrial design in Grenada by
by registration persons other than the registered owner requires the agreement of the latter.
(2) For the purposes of this Act, exploitation of a registered industrial
design means the making, selling or importation of articles incorporating the
industrial design.
(3) Section [12](4)(a)(i) applies with necessary modifications to industrial
designs.
(4) The registered owner of an industrial design has, in addition to any
other rights, remedies or actions available, the right to institute court
proceedings against any person who infringes the industrial design by
performing, without the owner’s agreement, any of the acts referred to inIP/N/1/GRD/I/3
Page 21
subsection (2) or who performs acts which make it likely that infringement
will occur.
Duration; 22. (1) The registration of an industrial design is for a period of 5 years
Renewal from the filing date of the application for registration
(2) The registration of an industrial design may be renewed for two further
consecutive periods of 5 years by the payment of the prescribed renewal fee.
(3) A grace period of 6 months is allowed for the late payment of the
renewal fee on payment of the prescribed surcharge.
Invalidation 23. (1) Any interested person may request the court to invalidate the
registration of an industrial design.
(2) The court must invalidate the registration if the person requesting the
invalidation proves that any of the requirements of sections [16] and [17] is
not fulfilled or if the registered owner of the industrial design is not the
creator or the creator’s successor in title.
(3) Section [15](3) and (4) applies with necessary modifications to
industrial designs.
PART IV – MARKS, COLLECTIVE MARKS AND TRADE NAMES
Definition of 24. For the purposes of this Act –
“mark,”
“collective (a) “mark” means any visible sign capable of distinguishing
mark” and the goods (“trademark”) or services (“service mark”) of an
“trade name” enterprise;
(b) “collective mark” means any visible sign designated as such
in the application for registration and capable of
distinguishing the origin or any other common characteristic,
including the quality, of goods or services of differentIP/N/1/GRD/I/3
Page 22
enterprises which use the sign under the control of the
registered owner of the collective mark;
(c) “trade name” means the name or designation identifying and
distinguishing an enterprise.
Acquisition of 25. The exclusive right to a mark, as conferred by this Act, is acquired by
the exclusive registration in accordance with the provisions of the Act.
right to a mark
Registrability 26. A mark must not be 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 order 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;
(d) if it is identical with, or is an imitation of or contains as an
element, an armorial bearing, flag and other emblem, a name
or abbreviation or initials of the name of, or official sign or
hallmark adopted by, any State, intergovernmental
organisation or organisation created by an international
convention, unless authorized by the competent authority of
that State or organisation;
(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
Grenada for identical or similar goods or services of another
enterprise;IP/N/1/GRD/I/3
Page 23
(f) if it is registered in Grenada and well-known for goods or
services which are not identical or similar to those in respect
of which registration is applied for, if that use of 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 the interests of the owner of the
well-known mark are likely to be damaged by such use;
(g) if it is identical with a mark belonging 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 cause confusion.
Application for 27. (1) An application for the registration of a mark must be filed with the
registration Registrar and accompanied by the prescribed application fee.
(2) An application for the registration of a mark must contain -
(a) a request for registration of the mark;
(b) a reproduction of the mark;
(c) 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.
Priority 28. (1) An application for the registration of a mark may contain a declaration
claiming the priority, as provided for in the Parish Convention, of an earlier
national or regional application filed by the applicant or the applicant’s
predecessor in title in or for any State party to the said Convention [or any
Member of the World Trade Organisation].
(2) If an application contains a declaration under this section, the Registrar
may request that the applicant furnish, within the specified time, a copy of theIP/N/1/GRD/I/3
Page 24
earlier application, certified as correct by the Registry with which it was
filed.
(3) The effect of the said declaration is as provided in the Paris
Convention.
(4) If the Registrar finds that the requirements under this section and the
relevant regulations have not been fulfilled, the declaration must be
considered not to have been made.
Examination 29. The Registrar must -
(a) examine whether the application complies with the
requirements of section [27](2) and the relevant regulations;
and
(b) examine and determine whether the mark is a mark as
defined in section [24](a) and is registrable under section
[26].
Publication 30. If the Registrar is satisfied that the conditions referred to in section [29]
are fulfilled, he or she must forthwith cause the application, as accepted, to be
published in the prescribed manner.
Opposition 31. (1) Any 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 the grounds that one or more of the requirements of sections [24](a)
and [26] and the relevant regulations are not fulfilled.
(2) The Registrar must forthwith send a copy of any such notice to the
applicant, and, within the prescribed period and in the prescribed manner, the
applicant must send to the Registrar a counter-statement of the grounds on
which the applicant relies; if the applicant does not do so, the applicant is
deemed to have abandoned the application.IP/N/1/GRD/I/3
Page 25
(3) If the applicant sends a counter-statement, the Registrar must furnish a
copy of it to the person giving notice of opposition and, after hearing the
parties, if either or both wish to be heard, and considering the merits of the
case, must decide whether the mark should be registered.
Rights before 32. (1) After an application is published and until the registration of the
registration mark, the applicant has the same privileges and rights as the applicant would
have if the mark had been registered.
(2) It is a defence to an action brought in respect of an act done after the
application was published, if the defendant establishes that the mark could
not validly have been registered at the time the act was done.
Withdrawal of 33. An applicant for the registration of a trademark may withdraw the
application application at any time during its pendency.
Registration of 34. If the Registrar is satisfied that the conditions referred to in section
mark [29] are fulfilled, and either -
(a) the registration of the mark has not been opposed within the
period referred to in section [31]; or
(b) the registration of the mark has been opposed and the
opposition has been withdrawn or has been decided in the
applicant’s favour,
the Registrar must register the mark, publish a reference to the registration
and issue to the applicant a certificate of registration. Otherwise the Registrar
must refuse the application.
Rights conferred 35. (1) The use of a registered mark in relation to any goods or services
by registration for which it has been registered, by any person other than the registered
owner, requires the agreement of the latter.IP/N/1/GRD/I/3
Page 26
(2) The registered owner of a mark has, in addition to any other rights,
remedies or actions available, the right to institute court proceedings against
any person who infringes the mark by using the mark without the owner’s
agreement or who performs acts which make it likely that infringement will
occur.
(3) Where needed to avoid confusion to the public, the right under
subsection (1) extends to the use of a sign similar to the registered mark and
use in relation to goods and services similar to those for which the mark has
been registered.
(4) The rights conferred by registration of a mark do not extend to acts in
respect of articles which have been put on the market in Grenada by the
registered owner or with the owner’s consent.
(5) The provisions of section [26](e) and (f) apply with necessary
modifications in any action instituted by the owner of a well-known mark
against any person in respect of the unlawful use of the well-known mark.
Duration; 36. (1) The registration of a mark is for a period of 10 years from the filing
renewal date of the application for registration.
(2) The registration of a mark may, upon request, be renewed for
consecutive periods of 10 years by the payment of the prescribed renewal fee.
(3) A grace period of 6 months is allowed for the late payment of the
renewal fee on payment of the prescribed surcharge.
Invalidation 37. (1) Any interested person may make a request to the [Court] [Registrar]
for the registration of a mark to be invalidated.
(2) The [Court] [Registrar] must invalidate the registration of a mark if the
person requesting the invalidation proves that any of the requirements of
sections [24](a) and [26] is not fulfilled.IP/N/1/GRD/I/3
Page 27
(3) The invalidation of a registration of a mark is deemed to have been
effective as of the date of registration, and the Registrar must record and
publish a reference to the invalidation as soon as possible after it.
Removal on 38. (1) Any interested person may request the [Court to order the removal
grounds of of] [Registrar to remove] a mark from the register, in respect of any of the
non-use goods or services in respect of which it is registered, on the ground that up to
one month prior to filing the request the mark had, after its registration, not
been used by the registered owner or a licensee during a continuous period of
3 years or longer.
(2) A mark must 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 it in respect of those goods or services.
Collective 39. (1) Subject to subsections (2) and (3), sections [25 to 38] apply to
marks collective marks, except that references therein to section [24](a) are to
be read as references to section [24](b).
(2) (a) An application for registration of a collective mark must
designate the mark as a collective mark and must be
accompanied by a copy of the regulations governing the use
of the collective mark.
(b) The registered owner of a collective mark must notify the
Registrar of any changes made in respect of the regulations
referred to in paragraph (a).
(3) In addition to the grounds specified in section [37], the [Court]
[Registrar] must invalidate the registration of a collective mark if the person
requesting the invalidation proves –
(a) that only the registered owner uses the mark;IP/N/1/GRD/I/3
Page 28
(b) that the owner uses or permits its use in contravention of the
regulations referred to in subsection (2)(a); or
(c) that the owner uses or permits its use in a manner liable to
deceive trade circles or the public as to the origin or any
other common characteristics of the goods or services
concerned.
(2) (a) Notwithstanding any laws or regulations providing for any
obligation to register trade names, such names are protected,
even prior to or without registration, against any unlawful act
committed by third parties.
(b) In particular, any subsequent use of a 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, is unlawful.
Licensing of 40. (1) A licence contract concerning the registration of a mark, or of an
marks and application for registration, must provide for effective control by the
collective marks licensor of the quality of the goods or services of the licensee in connection
with which the mark is used.
(2) If the licence contract does not provide for quality control or if such
quality control is not effectively carried out, the licence contract is not valid.
(3) The registration of a collective mark, or of an application for
registration, cannot be the subject of a licence contract.
Trade names 41. 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 deceive trade circles or the public as to the
nature of the enterprise identified by that name.IP/N/1/GRD/I/3
Page 29
PART V – GENERAL PROVISIONS
Changes in 42. (1) Any change in the ownership of a patent, the registration of an
ownership industrial design or the registration of a mark or collective mark, or in the
ownership of an application for any of them, must be in writing and must,
upon the request of any interested party to the Registrar, be recorded and,
except in the case of an application, published by the Registrar.
(2) A change which should be recorded under subsection (1) has no effect
against third parties until such recording is effected.
(3) Any change in the ownership of the registration of a collective mark, or
of an application for registration, requires previous approval by the Minister.
(4) Any change in the ownership of a trade name must be made with the
transfer of the enterprise or part thereof identified by that name and must be
in writing.
(5) A change in ownership of the registration of a mark or a collective
mark is invalid if it is likely to deceive or cause confusion, particularly in
regard to the nature, 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.
Licence 43. (1) A copy of each licence contract concerning a patent, a registered
contract industrial design or a registered mark, or concerning an application for any of
them, must be submitted to the Registrar, who must keep its contents
confidential but must record it and publish a reference to it.
(2) Until the contract is so recorded it has no effect against third parties.
Agents 44. An applicant whose ordinary residence or principal place of business is
outside Grenada must be represented by a legal practitioner resident and
practising in Grenada.IP/N/1/GRD/I/3
Page 30
Organisation of 45. (1) (a) The [Industrial Property] Registry is established within the
the Industrial Ministry of [Legal Affairs].
Property]
registry (b) The [Industrial Property] Registry has all functions relating
to the procedure for the grant of patents and the registration
of industrial designs, marks and collective marks and for the
administration of granted patents and registered industrial
designs, marks and collective marks as specified in this Act
and the regulations.
(2) (a) [The Registrar is appointed by the [………….].]
(b) The Registrar must be assisted by a Deputy and such
Assistant Registrars as may be appointed and must
superintend and perform all duties required by this Act and
the regulations and has the authority to carry out studies,
programs or exchanges of items or services regarding
domestic and international industrial property law.
(c) Decisions under this Act must be signed by the Registrar or
an official designated by the Registrar.
(3) The Minister must determine the organisational structure and regulate
all questions concerning the financial and budgetary system of the [Industrial
Property] Registry.
Registers; 46. (1) (a) The [Industrial Property] Registry must maintain separate
Gazette registers for patents, industrial designs and marks. Collective
marks must be registered in a special section of the Register
of Marks. All the recordings provided for in this Act must be
effected in those Registers.
(b) The Registers may be consulted by any person, and any
person may obtain extracts therefrom, under the conditions
prescribed in the regulations.IP/N/1/GRD/I/3
Page 31
(2) The [Industrial Property] Registry must publish in the Gazette all the
publications provided for in this Act.
Corrections of 47. (1) The Registrar may, subject to the regulations, correct any error of
errors; extension translation or transcription, clerical error or mistake in any application or
of time document filed with the [Industrial Property] registry or in any recording
effected pursuant to this Act or the regulations.
(2) If the Registrar is satisfied that the circumstances justify it, he or she
may, upon receiving a written request, extend the time for doing any act or
taking any proceeding under this Act and the regulations, upon notice to the
parties concerned and upon such terms as the Registrar directs.
(3) An extension under subsection (2) may be granted even though the time
for doing the act or taking the proceeding has expired.
Exercise of 48. The Registrar must give any party to a proceeding before him or her an
discretionary opportunity of being heard before exercising adversely to that party any
powers discretionary power vested in the Registrar by this Act or the regulations.
Competence of 49. (1) The [……….] Court has jurisdiction in cases of dispute relating to
court; appeals the application of this Act and the regulations and in matters which under this
Act and the regulations 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 the registration of an industrial design or of a mark or
collective mark, or the refusal of an application for such a grant or
registration, may be the subject of an appeal by any interested party before
the […..] Court and such appeal must be filed within [2] months of the date
of the decision.
Infringement 50. (1) Subject to sections [12](4), [14], 21(3) and 35(3), the performance of
any of the acts referred to in sections [12], [21], and [35] in Grenada by aIP/N/1/GRD/I/3
Page 32
person other than the owner of the title of protection, and without the
agreement of the latter, constitutes an infringement.
(2) On the request of the owner of the title of protection, or of a licensee if
the licensee has requested the owner to institute court proceedings for
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 section [41](2), and may award damages and grant
any other remedy provided for in the general law.
(3) Any person who knowingly performs an act which constitutes an
infringement as defined in subsection (1) or an unlawful act as defined in
section [41](2) commits an offence and is liable on summary conviction to a
fine of $___ and to imprisonment for ___ years.
(4) For the purposes of proceedings, other than criminal proceedings, in
respect of the violation of the rights of the owner of the patent referred to in
subsections (1) and (2), if the subject matter of the patent is a process for
obtaining a product, the burden of establishing that a product was not made
by the process is on the alleged infringer if either of the following conditions
is fulfilled -
(a) the product is new;
(b) a substantial likelihood exists that the product was made by
the process and the owner of the patent has been unable
through reasonable efforts to determine the process actually
used.
(5) In requiring the production of evidence, the court before which the
proceedings referred to in subsection (4) take place must take into account
the legitimate interests of the alleged infringer in not disclosing
manufacturing and business secrets.IP/N/1/GRD/I/3
Page 33
Application of [51. (1) Subject to subsection (2), the provisions of any international treaty
International in respect of industrial property to which Grenada is a party apply to
Treaties matters dealt with by this Act and, in case of conflict with provisions of this
Act, prevail over it.]
(2) Minister may make regulations amending this Act to conform to
provisions of a treaty etc.]
Regulations; 52. (1) The Minister may make regulations prescribing any matter
administrative required for the implementation of this Act. The regulations may, in
instructions particular, provide for the payment of fees in connection with applications for
the grant of patents and for the registration of industrial designs, marks and
collective marks and matters related thereto.
(2) The Registrar may issue Administrative Instructions relating to the
procedures under this Act and the regulations as well as to the other functions
of the [Industrial Property] Registry.
Repeal and 53. (1) The following are repealed -
Transitional
Provisions Patents Act (Cap. 227)
Patents Rules
[Registration of United Kingdom Patents Act (Cap. 283)]
[Registration of United Kingdom Patents Rules]
[Registration of United Kingdom Trade Marks Act (Cap. 284)]
[Registration of United Kingdom Trade Marks Rules]
(2) Notwithstanding the repeal of […….], patents granted and trademarks
registered thereunder remain in force and, subject to subsections (3) and (4),
are deemed to have been granted or registered under this Act.
(3) Patents deemed to have been granted by virtue of subsection (2) remain
in force for the unexpired portion of the period of protection provided under
this Act, subject to the payment of annual fees provided for in this Act.IP/N/1/GRD/I/3
Page 34
(4) Trademarks deemed to have been registered by virtue of subsection (2)
are due for renewal within the same period as under […….] and, upon
renewal, will be reclassified in accordance with the International
Classification.
(5) The Minister may by Order make any further transitional or saving
provisions that appear to the Minister to be necessary or desirable.
Commencement 54. (1) This Act comes into force on a date or dates appointed by the Minister
by order published in the Gazette .
(2) The Minister may appoint different dates for the coming into force of
different provisions.
__________