No.	4907	

Government	Gazette	23	March	2012	

Act No. 1, 2012

81

INDUSTRIAL PROPERTY ACT, 2012

as	 contemplated	 in	 section	 151,	 or	 who	 performs	 acts	 which	 make	 it	 likely	 that	
infringement	will	occur.
	
(2)	
The	 rights	 referred	 to	 in	 subsection	 (1)	 are	 in	 respect	 of	 the	 use	 of	 a	
mark	identical	to	or	so	similar	to	the	registered	trade	mark	as	to	be	likely	to	deceive	or	
cause	confusion,	and	in	relation	to	goods	or	services	in	respect	of	which	the	trade	mark	
is	registered,	or	goods	or	services	so	similar	to	those	for	which	the	trade	mark	has	been	
registered	that	it	is	likely	that	deception	or	confusion	may	arise	among	members	of	the	
public.
	
(3)	
In	case	of	such	use	of	an	identical	mark	for	identical	goods	or	services,	
a	likelihood	of	deception	or	confusion	must	be	presumed.
	
(4)	
The	 registered	 owner	 of	 a	 well-known	 trade	 mark	 as	 contemplated	 in	
section	138(1)(a)	or	(b)	or	a	registered	licensee	of	such	a	trade	mark	as	contemplated	in	
section	167	has,	in	addition	to	any	other	rights,	remedies	or	actions	available	to	him	or	
her,	 the	 right	 to	 institute	 legal	 proceedings	 against	 any	 person	 who	 infringes	 the	 trade	
mark	 by	 using	 the	 mark	 in	 the	 course	 of	 trade	 and	 without	 the	 written	 authorisation	 of	
the	 registered	 owner	 in	 the	 circumstances	 contemplated	 in	 section	 138(1)(a)	 or	 (b)	 or	
182(c).
Exhaustion of rights
153.
The	 right	 to	 institute	 proceedings	 conferred	 by	 the	 registration	 of	 a	
trade	mark	does	not	extend	to		

(a)	

acts	in	respect	of	articles	to	which	the	trade	mark	has	been	applied	and	
which	 have	 been	 put	 on	 the	 market	 in	 any	 country	 by	 the	 registered	
owner	or	with	his	or	her	written	consent;

	

(b)	

the	use	of	the	trade	mark	in	respect	of	or	in	relation	to	goods	to	be	sold	
or	 otherwise	 traded	 in,	 or	 services	 to	 be	 performed	 in,	 any	 place	 to	
which	the	registration	does	not	extend,	or	the	use	of	the	trade	mark	in	a	
manner	 or	 in	 circumstances	 to	 which,	 having	 regard	 to	 any	 conditions	
or	limitations	entered	in	the	register,	the	registration	does	not	extend.

Right to continue to use
154.	 (1)	
Nothing	in	this	Act	entitles	the	proprietor	of	a	registered	trade	
mark	 to	 interfere	 with	 or	 restrain	 the	 use	 by	 any	 person	 of	 a	 trade	 mark	 identical	 to	 a	
trade	 mark	 or	 nearly	 resembling	 it	 in	 respect	 of	 goods	 or	 services	 in	 relation	 to	 which	
that	person	or	a	predecessor	in	title	of	his	or	hers	has	made	continuous	and	bona fide	use	
of	that	trade	mark	from	a	date	prior	to	–

	

(a)	

the	 use	 of	 the	 first-mentioned	 trade	 mark	 in	 relation	 to	 those	 goods	 or	
services	by	the	proprietor	or	a	predecessor	in	title;	or

(b)	

to	the	registration	of	the	first-mentioned	trade	mark	in	respect	of	those	
goods	 or	 services	 in	 the	 name	 of	 the	 proprietor	 or	 a	 predecessor	 in	
title,

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