Trade Marks Act 1938 (repealed 31.10.1994)

1. Introductory Text

2. Registration, Infringement and other Substantive Provisions

   1. The register

      1. 1. Register of trade marks etc.

   2. Effect of registration and the action for infringement

      1. 2. No action for infringement of unregistered trade mark.

      2. 3. Registration to be in respect of particular goods.

      3. 4. Right given by registration in Part A, and infringement thereof.

      4. 5. Right given by registration in Part B, and infringment thereof.

      5. 6. Infringement by breach of certain restrictions.

      6. 7. Saving for vested rights.

      7. 8. Saving for use of name, address, or description of goods.

   3. Registrability and validity of registration

      1. 9. Distinctiveness requisite for registration in Part A.

      2. 10. Capability of distinguishing requisite for registration in Part B.

      3. 11. Prohibition of registration of deceptive, &c., matter.

      4. 12. Prohibition of registration of identical and resembling trade marks.

      5. 13. Registration in Part A to be conclusive as to validity after seven years.

      6. 14. Registration subject to disclaimer.

      7. 15. Words used as name or description of an article or substance.

      8. 16. Effect of limitation as to colour, and of absence thereof.

   4. Procedure for, and duration of, registration

      1. 17. Application for registration.

      2. 18. Opposition to registration.

      3. 19. Registration.

      4. 20. Duration and renewal of registration.

      5. 21. Registration of parts of trade marks and of trade marks as a series.

   5. Assignment and transmission

      1. 22. Powers of, and restrictions on, assignment and transmission.

      2. 23. Certain trade marks to be associated so as to be assignable and transmissible as a whole only.

      3. 24. Power of registered proprietor to assign and give receipts.

      4. 25. Registration of assignments and transmissions.

   6. Use and non-use

      1. 26. Removal from register and imposition of limitations on ground of non-use.

      2. 27. Defensive registration of well known trade marks.

      3. 28. Registered users.

      4. 29. Proposed use of trade mark by corporation to be constituted, &c.

      5. 30. Use of one of associated or substantially identical trade marks equivalent to use of another.

      6. 31. Use of trade mark for export trade.

   7. Rectification and correction of the register

      1. 32. General power to rectify entries in register.

      2. 33. Power to expunge or vary registration for breach of condition.

      3. 34. Correction of register.

      4. 35. Alteration of registered trade mark.

      5. 36. Adaptation of entries in register to amended or substituted classification of goods.

   8. Certification trade marks

      1. 37. Certification trade marks.

   9. Sheffield marks

      1. 38. Sheffield marks.

   10. Manchester Branch

       1. 39. Trade marks for textile goods.

       2. 39A. Registration of trade mark following overseas application.

3. General and Miscellaneous

   1. Rules and fees

      1. 40. Power of Board of Trade to make rules.

      2. 40A. Hours of business and excluded days.

      3. 41. Fees.

   2. Powers and duties of Registrar

      1. 42. Preliminary advice by Registrar as to distinctiveness.

      2. 43. Hearing before exercise of Registrar’s discretion.

      3. 44. Power of Registrar to award costs.

      4. 45. Annual reports of Registrar.

   3. Legal proceedings and appeals

      1. 46. Registration to be prima facie evidence of validity.

      2. 47. Certificate of validity.

      3. 48. Costs of Registrar in proceedings before Court, and payment of costs by Registrar.

      4. 49. Trade usage, &c. to be considered.

      5. 50. Registrar’s appearance in proceedings involving rectification.

      6. 51. Court’s power to review Registrar’s decision.

      7. 52. Discretion of Court in appeals.

      8. 53. Procedure on appeal to Board of Trade.

      9. 54. Procedure in cases of option to apply to Court or Registrar.

   4. Evidence

      1. 55. Mode of giving evidence.

      2. 56. Evidence of orders, &c. of Board of Trade.

      3. 57, 58. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

   5. Offences and restraint of use of Royal Arms

      1. 58A. Fraudulent application or use of trade mark an offence.

      2. 58B. Delivery up of offending goods and material.

      3. 58C. Order as to disposal of offending goods or material.

      4. 58D. Enforcement of section 58A.

      5. 59. Falsification of entries in register a misdemeanour.

      6. 60. Fine for falsely representing a trade mark as registered.

      7. 61. Restraint of use of Royal Arms, &c.

   6. Miscellaneous

      1. 62. Change of form of trade connection not to be deemed to cause deception.

      2. 63. Jointly owned trade marks.

      3. 64. Trusts and equities.

      4. 64A. Recognition of agents.

      5. 65. Saving for jurisdiction of courts in Scotland, Northern Ireland and Isle of Man.

      6. 66. Interpretation.

      7. 67. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

   7. Supplemental

      1. 68. Transitional provisions.

      2. 69. Repeal and savings.

      3. 70. . . . . . . . . . ....

      4. 71. Short title and extent.

4. SCHEDULES

   1. FIRST SCHEDULE

      Certification Trade Marks

      1. 1. (1) An application for the registration of a mark under...

      2. 2. (1) When an application has been accepted, the Registrar shall,...

      3. 3. (1) The regulations deposited in respect of a certification trade...

      4. 4. (1) The Board of Trade may, on the application in...

      5. 5. Notwithstanding anything in section forty-four of this Act, the Registrar...

      6. 6. The following provisions of this Act shall not have effect...

   2. SECOND SCHEDULE

      Sheffield Marks

      1. 1. The Cutlers’ Company shall continue to keep at Sheffield the...

      2. 2. An application by a person carrying on business in Hallamshire,...

      3. 3. An application for the registration of a trade mark made...

      4. 4. The Registrar shall consider an application notified to him as...

      5. 5. Within the prescribed time after receipt of a notice of...

      6. 6. The Registrar shall consider any arguments, proposals or observations notified...

      7. 7. Where the Registrar refuses authorisation to proceed with an application,...

      8. 8. Upon the registration of a trade mark in the Sheffield...

      9. 9. The provisions of this Act and of the rules with...

      10. 10. When the Registrar receives an application for the registration of...

      11. 11. Any person aggrieved by a decision of the Cutlers’ Company...

      12. 12. (1) For the purposes of this Schedule the expression “metal...

      13. 13. A certificate purporting to be under the hand of the...

   3. THIRD SCHEDULE

      Transitional Provisions

      1. Validity of registrations under previous Acts

         1. 1. (1) Subject to the provisions of this paragraph and of...

      2. Assignments and transmissions (before appointed day) giving exclusive rights in different places in the United Kingdom

         1. 2. (1) The validity of an assignment or transmission of a...

      3. Saving as to retrospective provisions relating to assignments and transmissions

         1. 3. The retrospective provisions contained in section twenty-two of this Act,...

      4. Association of trade marks assignable or transmissible as a whole only under the Trade Marks Act, 1919

         1. 4. Where immediately before the appointed day a trade mark was...

      5. Previous use of a trade mark by person becoming registered user on application made within one year of appointed day

         1. 5. Where a person is registered as a registered user of...

      6. Use of trade mark for export trade before appointed day

         1. 6. Section thirty-one of this Act shall be deemed to have...

      7. Trade marks registered under section sixty-two of the Trade Marks Act 1905,

         1. to be deemed to have been registered under section thirty-seven...

         2. 7. Section thirty-seven of this Act shall have effect, in relation...

      8. Cotton marks registered before appointed day

         1. 8. No registration as of a date before the appointed day...

   4. FOURTH SCHEDULE

      1. . . . . . . . . . ....