Trade Marks Act 1994

An international trade mark protected in the European Union to be treated as registered under this Act U.K.

[F1 1 (1) A trade mark which, immediately before IP completion day, is an international trade mark which is protected in the European Union in accordance with Article 189(2) of the European Union Trade Mark Regulation (an “existing IR(EU)”) is to be treated on and after IP completion day as if an application had been made, and the trade mark had been registered, under this Act in respect of the same goods or services in respect of which the international trade mark is protected in the European Union.

(2) Where the international registration to which an international trade mark is subject is sub-divided to reflect the making of more than one request for territorial extension to the European Union under Article 3ter there is to be deemed for the purposes of sub-paragraph (1) to be a separate trade mark in respect of the goods or services covered by each sub-division of the registration.

(3) Where the international registration to which an international trade mark is subject has been created by virtue of Rule 27(2) (recording of partial change in ownership) (a “separate international registration”), it is irrelevant for the purposes of the application of sub-paragraph (2) to that separate international registration that the requests for territorial extension were made before the separate international registration was created.

(4) A registered trade mark which comes into being by virtue of sub-paragraph (1) is referred to in this Act as a comparable trade mark (IR).

(5) This Act applies to a comparable trade mark (IR) as it applies to other registered trade marks except as otherwise provided in this Schedule.

(6) A comparable trade mark (IR) is deemed for the purposes of this Act to be registered as of—

(a) where the protection in the European Union of the existing IR(EU) from which the comparable trade mark (IR) derives resulted from a request for territorial extension under Article 3ter(1) (request mentioned in original application), the date of registration of the existing IR(EU) accorded pursuant to Article 3(4); or

(b) where the protection in the European Union of the existing IR(EU) from which the comparable trade mark (IR) derives resulted from a request for territorial extension under Article 3ter(2) (subsequent request), the date on which the request was recorded in the International Register,

and that date is deemed for the purposes of this Act to be the date of registration.

(7) Section 40(3) and (4) does not apply to the registration of a comparable trade mark (IR) under this Part.

(8) Section 67(1) applies in relation to the provision of information and the inspection of documents relating to a comparable trade mark (IR) notwithstanding that there will have been no application under this Act for the registration of the trade mark (and so no publication of an application).

(9) Nothing in this Act authorises the imposition of a fee, or the making of provision by rules or regulations which authorises the imposition of a fee, in respect of any matter relating to a comparable trade mark (IR) (see instead provision made by regulations under Schedule 4 to the European Union (Withdrawal) Act 2018).

(10) For the purposes of this Act—

(a) the date of filing of an application for registration of a comparable trade mark (IR) is the same date as the deemed date of registration of the comparable trade mark (IR) under sub-paragraph (6);

(b) references to the date of application for registration of a comparable trade mark (IR) are to the date of filing of the application;

(c) where an earlier trade mark is a comparable trade mark (IR), references to the completion of the registration procedure for the earlier trade mark are to publication by the European Union Intellectual Property Office of the matters referred to in Article 190(2) of the European Union Trade Mark Regulation in respect of the existing IR(EU) from which the comparable trade mark (IR) derives.

(11) In this Schedule—

(a) “the International Register” means the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol;

(b) “international registration” means a registration made in the International Register in accordance with the Madrid Protocol;

(c) “international trade mark” means a trade mark which is the subject of an international registration.]

Textual Amendments

F1 Sch. 2B inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 4 para. 3 (with Sch. 5 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 22(b)); 2020 c. 1, Sch. 5 para. 1(1)