PART III.

Provisions Relating to Powers and Duties of Controller and to Legal Proceedings.

48. —(1) The power to give to a person who proposes to apply for the registration of a trade mark in Part A or Part B of the register advice as to whether the trade mark appears to the Controller prima facie to be inherently adapted to distinguish, or capable of distinguishing, as the case may be, shall be a function of the Controller under this Act.

(2) Any such person who is desirous of obtaining such advice must make application to the Controller therefor in the prescribed manner.

(3) If on an application for the registration of a trade mark as to which the Controller has given advice as aforesaid in the affirmative, made within three months after the advice is given, the Controller, after further investigation or consideration, gives notice to the applicant of objection on the ground that the trade mark is not adapted to distinguish, or capable of distinguishing, as the case may be, the applicant shall be entitled, on giving notice of withdrawal of the application within the prescribed period, to have repaid to him any fee paid on the filing of the application.

49. —The Controller may, in any case of doubt or difficulty in the administration of this Act, apply to the Attorney General for directions in the matter.

50. —Where any discretionary or other power is given to the Controller by this Act or the rules, he shall not exercise that power adversely to the applicant for registration or the registered proprietor of the trade mark in question without (if duly required so to do within the prescribed time) giving to the applicant or registered proprietor an opportunity of being heard.

51. —In all proceedings before the Controller under this Act, the Controller shall have power to award to any party such costs as he may consider reasonable, and to direct how and by what parties they are to be paid, and any such order may, by leave of the Court, be enforced in the same manner as a judgment or order of the Court to the same effect.

52. —In all legal proceedings relating to a registered trade mark (including applications under section 40 of this Act) the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.

53. —In any legal proceeding in which the validity of the registration of a registered trade mark comes into question and is decided in favour of the proprietor of the trade mark, the Court may certify to that effect, and if it so certifies then in any subsequent legal proceeding in which the validity of the registration comes into question the proprietor of the trade mark on obtaining a final order or judgment in his favour shall have his full costs, charges and expenses as between solicitor and client, unless in the subsequent proceeding the Court certifies that he ought not to have them.

54. —In any proceedings before the Court under this Act the Controller shall be neither awarded costs nor ordered to pay the costs of any other party.

55. —In any action or proceeding relating to a trade mark or trade name, the Court or the Controller (as the case may be) 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.

56. —(1) The Controller shall be given notice in writing (by the plaintiff, appellant or applicant, as the case may be) of any legal proceeding in which the relief sought would affect the register (including an appeal from any order or decision of the Controller and an application under section 25 or 26 of this Act to extend the time for making an appeal against a decision of the Controller under either of those sections) and of the decision of the Court respecting any such legal proceeding, and shall have the right to appear and be heard, and shall appear if so directed by the Court, in any such legal proceeding.

(2) Unless otherwise directed by the Court, the Controller 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 it or of the practice of the Office in like cases or of such other matters relevant to the issues, and within his knowledge as Controller, as he thinks fit, and the statement shall be deemed to form part of the evidence in the proceeding.

57. —(1) An appeal shall lie to the Court from any order or decision of the Controller under any provision of this Act (not being a decision of the Controller under section 11 or subsection (7) of section 69 of this Act) or from a correction of an error in the register by the Controller under subsection (3) of section 42 of this Act, and the Court may make such order confirming, annulling or varying the order or decision or correction of the Controller as it thinks fit.

(2) In any appeal from a decision of the Controller to the Court under this Act, the Court shall have and exercise the same discretionary powers as under this Act are conferred upon the Controller.

(3) Except by leave of the Court, no appeal (other than an appeal under section 25 or 26 of this Act) from an order or decision of the Controller or from a correction of an error in the register by the Controller under subsection (3) of section 42 of this Act shall be entertained of which notice to the Court is not given within one month from the date of the order, decision or correction appealed against or within such further period not exceeding three months as the Controller may allow (upon request received before the expiration of the said period of one month).

(4) Subject to subsection (5) of this section, a decision of the Court under this section shall be final and not appealable.

(5) By leave of the Court, an appeal from a decision of the Court under this section shall lie to the Supreme Court on a specified question of law.

58. —The Court, in dealing with any question of the rectification of the register (including all applications under section 40 of this Act), shall have power to review any decision of the Controller relating to the entry in question or the correction sought to be made.

59. —Where under this Act an applicant has an option to make an application either to the Court or to the Controller—

(a) if an action concerning the trade mark in question is pending, the application must be made to the Court;

(b) if in any other case the application is made to the Controller, he may, at any stage of the proceedings, refer the application to the Court, or he may, after hearing the parties, determine the question between them, subject to appeal to the Court.

60. —(1) In any proceeding under this Act before the Controller, the evidence shall be given by statutory declaration in the absence of directions to the contrary, but, in any case in which the Controller thinks it right so to do, the Controller may take evidence orally in lieu of or in addition to evidence by declaration.

(2) 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.

(3) In case any part of the evidence is taken orally the Controller may do all or any of the following things:—

(a) summon witnesses to attend before him,

(b) examine on oath (which he is hereby authorised to administer), or permit the examination on oath of, the witnesses attending before him,

(c) require any such witness to produce to the Controller any document in such witness's power or control.

(4) A witness before the Controller shall be entitled to the same immunities and privileges as if he were a witness before the Court.

(5) A summons shall be signed by the Controller.

(6) If any person—

(a) on being duly summoned as a witness before the Controller makes default in attending, or

(b) being in attendance as a witness refuses to take an oath legally required by the Controller to be taken, or to produce any document in his power or control legally required by the Controller to be produced by him, or to answer any question to which the Controller may legally require an answer, or

(c) does any other thing which would, if the Controller were a court of law, having power to commit for contempt of court, be contempt of such court,

the Controller may certify the offence of that person under his official seal to the Court and the Court may, after such inquiry as it thinks proper to make, punish or take steps for the punishment of that person in like manner as if he had been guilty of contempt of the Court.

61. —(1) A copy of any entry in the register, purporting to be certified by, and sealed with the official seal of, the Controller, shall be admitted in evidence in any court of law, and in all proceedings, without further proof or production of the original.

(2) Any person requiring such a certified copy as aforesaid shall be entitled to obtain it on payment of the prescribed fee.

62. —A certificate purporting to be under the official seal of the Controller as to any entry, matter or thing that he is authorised by this Act or the rules 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.