The Trade Marks (Isle of Man) Order 2013

[F1 4.— (1) Section 6 (meaning of “earlier trade mark”) is amended as follows. U.K.

(2) In subsection (1)—

[F2 (a) in paragraph (a)—

(i) after “registered trade mark” omit “,” and insert “or”;

(ii) omit “or Community trade mark;]

[F3 (aa) after paragraph (a) insert—

“(aa) a comparable trade mark (EU) or a trade mark registered pursuant to an application made under paragraph 25 of Schedule 2A which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired;

(ab) a comparable trade mark (IR) or a trade mark registered pursuant to an application made under paragraph 28, 29 or 33 of Schedule 2B which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired;”.]

(b) for paragraph (b) substitute―

F4 “(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(ba) a registered trade mark or international trade mark (UK) which—

(i) [F5 prior to exit day] has been converted from a European Union trade mark or international trade mark (EC) which itself had a valid claim to seniority [F6 of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired], and

(ii) accordingly has the same claim to seniority, or;”; and

(c) in paragraph (c), after “Paris Convention” insert “or the WTO agreement”.

[F7 (2A) After subsection (1) insert—

“(1A) In subsection (1), “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008.”.

(2B) In subsection (2)—

(a) omit “or (b)”;

(b) at the end, insert “(taking account of subsection (2C))”.

(2C) After subsection (2) insert—

“(2A) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made pursuant to paragraph 25 of Schedule 2A and which if registered would be an earlier trade mark by virtue of subsection (1)(aa), subject to its being so registered.

(2B) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made pursuant to paragraph 28, 29 or 33 of Schedule 2B and which if registered would be an earlier trade mark by virtue of subsection (1)(ab), subject to its being so registered.

(2C) Where an application for registration of a trade mark has been made pursuant to paragraph 25 of Schedule 2A or paragraph 28, 29 or 33 of Schedule 2B, subsection (l)(a) is to apply as if the date of application for registration of the trade mark were—

(a) in the case of an application made pursuant to paragraph 25 of Schedule 2A, the relevant date referred to in paragraph 25(2) in respect of that application;

(b) in the case of an application made pursuant to paragraph 28 of Schedule 2B, the relevant date referred to in paragraph 28(2) in respect of that application (taking account of paragraph 28(5));

(c) in the case of an application made pursuant to paragraph 29 of Schedule 2B, the relevant date referred to in paragraph 29(2) in respect of that application (taking account of paragraph 29(4));

(d) in the case of an application made pursuant to paragraph 33 of Schedule 2B, the relevant date referred to in paragraph 33(2) or (3) (as the case may be) in respect of that application (taking account of paragraph 33(4)).”.]

(3) Omit subsection (3).]

Textual Amendments

F1 Sch. para. 4 substituted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 5

F2 Sch. para. 4(2)(a) substituted (31.12.2020) by The Registered Designs and Trade Marks (Isle of Man) (Amendment) (EU Exit) Order 2019 (S.I. 2019/1335), art. 1, Sch. 2 para. 4(a); 2020 c. 1, Sch. 5 para. 1(1)

F3 Sch. para. 4(2)(aa) inserted (31.12.2020) by The Registered Designs and Trade Marks (Isle of Man) (Amendment) (EU Exit) Order 2019 (S.I. 2019/1335), art. 1, Sch. 2 para. 4(b); 2020 c. 1, Sch. 5 para. 1(1)

F4 Words in Sch. para. 4(2)(b) omitted (31.12.2020) by virtue of The Registered Designs and Trade Marks (Isle of Man) (Amendment) (EU Exit) Order 2019 (S.I. 2019/1335), art. 1, Sch. 2 para. 4(c)(i); 2020 c. 1, Sch. 5 para. 1(1)

F5 Words in Sch. para. 4(2)(b) inserted (31.12.2020) by The Registered Designs and Trade Marks (Isle of Man) (Amendment) (EU Exit) Order 2019 (S.I. 2019/1335), art. 1, Sch. 2 para. 4(c)(ii)(aa); 2020 c. 1, Sch. 5 para. 1(1)

F6 Words in Sch. para. 4(2)(b) substituted (31.12.2020) by The Registered Designs and Trade Marks (Isle of Man) (Amendment) (EU Exit) Order 2019 (S.I. 2019/1335), art. 1, Sch. 2 para. 4(c)(ii)(bb); 2020 c. 1, Sch. 5 para. 1(1)

F7 Sch. para. 4(2A)-(2C) inserted (31.12.2020) by The Registered Designs and Trade Marks (Isle of Man) (Amendment) (EU Exit) Order 2019 (S.I. 2019/1335), art. 1, Sch. 2 para. 4(d); 2020 c. 1, Sch. 5 para. 1(1)