The Rules of the Supreme Court (Northern Ireland) (Revision) 1980

ORDER 100 THE TRADE MARKS ACT 1938

Assignment to Chancery Division

1.  Proceedings in the High Court under the Trade Marks Act 1938(1) shall be assigned to the Chancery Division.

[E.r. 1]

Appeals and applications under the Trade Marks Act 1938

2.—(1) Subject to rule 3, every application to the High Court under the said Act of 1938 must be begun by originating motion.

(2) Notice of motion by which any such application is made must be served on the Comptroller-General of Patents, Designs and Trade Marks (in this Order referred to as “the Comptroller”).

(3) Where the Comptroller refers to the High Court an application under the said Act of 1938 made to him, and where the Department of Trade refer to that Court an appeal to the Department under that Act, then, unless within one month after receiving notification of the decision to refer, the applicant or the appellant, as the case may be, makes to that Court the application or appeal referred, he shall be deemed to have abandoned it.

(4) The period prescribed by Order 55, rule 14(2), or by paragraph (3) in relation to an application or appeal to which that paragraph applies may be extended by the Comptroller on the application of any party interested and may be so extended although the application is not made until after the expiration of that period, but the foregoing provision shall not be taken to affect the power of the Court under Order 3, rule 5, to extend that period.

(5) Where under subsection (6) of section 17, or subsection (9) of section 18, of the said Act of 1938 an appellant becomes entitled and intends to withdraw his application which is the subject matter of the appeal, he must give notice of his intention to the Comptroller and to any other party to the appeal within one month after the Court has given leave under the said subsection (6) or the said subsection (9), as the case may be, for further grounds of objection to be taken.

[E.r. 2]

Proceedings for infringement of registered trade mark; validity of registration disputed

3.—(1) Where in any proceedings a claim is made for relief for infringement of the right to the use of a registered trade mark, the party against whom the claim is made may in his defence put in issue the validity of the registration of that trade mark or may counterclaim for an order that the register of trade marks be rectified by cancelling or varying the relevant entry or may do both those things.

(2) A party to any such proceedings who ill his pleading (whether a defence or counterclaim) disputes the validity of the registration of a registered trade mark must serve with the pleading particulars of the objections to the validity of the registration on which he relies ill support of the allegation of invalidity.

(3) A party to any such proceedings who counterclaims for an order that the register of trade marks be rectified must serve on the Comptroller a copy of the counterclaim together with a copy of the particulars mentioned in paragraph (2); and the Comptroller shall be entitled to take such part in the proceedings as he may think fit but need not serve a defence or other pleading unless ordered to do so by the Court.

[E.r. 3]

(1)

1938 c. 22