SCHEDULE Amendments to the Trade Marks (Isle of Man) Order 2013
19 For paragraph 38 substitute—

“38 1 Schedule 1 (collective marks) is amended as follows.
2 In paragraph 5—
(a) in sub-paragraph (2) omit “, where they exist,”;
(b) the second sentence of sub-paragraph (2) is renumbered as sub-paragraph (4), and
(c) before sub-paragraph (4) insert—

“3 Where the regulations govern use of a mark referred to in paragraph 3(1), they must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark, provided that the person fulfils all the other conditions of the regulations.”

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3 In paragraph 6(1)(a) after “paragraph 5(2)” insert “and (3)”.
4 In paragraph 11(c) for “Commissioners of Customs and Excise” substitute “the Treasury”.
5 In paragraph 12—
(a) for sub-paragraph (2), substitute—

“2 Subject to any agreement to the contrary between the authorised user and the proprietor, an authorised user may only bring proceedings for infringement of a registered collective mark with the consent of the proprietor.”

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(b) omit sub-paragraph (3);
(c) in sub-paragraph (4), omit “Where infringement proceedings are brought by virtue of this paragraph” and substitute “Where proceedings are brought by an authorised user for infringement of a registered collective mark (with the consent of the proprietor or pursuant to any agreement referred to in sub-paragraph (2))”;
(d) after sub-paragraph (6), insert—

“7 Where the proprietor of a registered collective mark brings infringement proceedings, an authorised user who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.”

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6 In paragraph 13—
(a) in sub-paragraph (a), for “proprietor” substitute “persons authorised to use it”;
(b) in sub-paragraph (b)—
(i) for “has failed to observe, or to secure the observance of,” substitute “has not taken reasonable steps to prevent the mark being used in a manner that is incompatible with the conditions of use laid down in”; and
(ii) after “mark” insert “(as amended from time to time)”;
(c) in sub-paragraph (c)(i), after “paragraph 5(2)” insert “and (3)”.
7 In paragraph 14—
(a) for “may” substitute “shall”;
(b) after “the provisions of” insert “section 49(1A) (definition of who may be registered as the proprietor of a certification mark) or”;
(c) after “6(1)” insert “unless the breach was only of paragraph 6(1) and the proprietor of the mark, by amending the regulations governing use, complies with the requirements of paragraph 6(1).”

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