Trade Marks Act 1994

Effect of a licence of an existing IR(EU)U.K.

[F118(1)This paragraph applies where immediately before IP completion day an existing IR(EU) is the subject of a licence (a “relevant licence”) which—

(a)authorises the doing of acts in the United Kingdom which would otherwise infringe the international trade mark; and

(b)does not expire on IP completion day.

(2)Subject to any agreement to the contrary between the licensee and the licensor, a relevant licence continues to authorise the doing of acts in the United Kingdom which would otherwise infringe the comparable trade mark (IR) which derives from the existing IR(EU).

(3)Sub-paragraph (2) is subject to—

(a)the terms on which the relevant licence was granted; and

(b)such modifications to the terms referred to in paragraph (a) as are necessary for their application in the United Kingdom.

(4)Section 25 applies in relation to a relevant licence as if it were a registrable transaction affecting a comparable trade mark (IR), subject to the modifications set out below.

(5)An application under section 25(1) may only be made by—

(a)a person claiming to be a licensee by virtue of the relevant licence; or

(b)the proprietor of the comparable trade mark (IR).

(6)Where immediately before IP completion day there is an entry in the International Register relating to a relevant licence—

(a)section 25(3) and (4) does not apply until after the expiry of the relevant period; and

(b)section 25(4)(a) applies after the expiry of the relevant period but as if the reference to six months beginning with the date of the transaction were a reference to eighteen months beginning with IP completion day.

(7)In sub-paragraph (6)(a), the “relevant period” means the period of twelve months beginning with the day after that on which IP completion day falls.]

Textual Amendments