39A Registration of trade mark following overseas application.

1

Any person who has applied for protection for any trade mark in a relevant country or his legal representative or assignee shall be entitled on an application for registration made within six months of the application for protection in the relevant country to registration of his mark under this Act in priority to other applicants.

2

A mark registered on an application made under this section shall be registered as of the date of the application in the relevant country and that date shall be deemed for the purposes of this Act to be the date of registration.

3

Nothing in this section shall entitle the proprietor of the mark to recover damages for infringements happening prior to the date of the application for registration under this Act.

4

The registration of a mark under this section shall not be invalidated by reason only of the use of the mark in the United Kingdom during the period of 6 months within which the application may be made.

5

The application for the registration of a mark under this section must be made in the same manner as an ordinary application under this Act.

6

Where a person has applied for protection for any mark by an application which—

a

in accordance with the terms of a treaty subsisting between any two or more relevant countries, is equivalent to an application duly made in any one of those countries; or

b

in accordance with the law of any relevant country, is equivalent to an application duly made in that country,

he shall be deemed for the purposes of this section to have applied in that country.

7

Subject to subsection (8) below, Her Majesty may by Order in Council direct that this section shall apply to a country specified in the Order.

8

If a country is not a dependent territory, an Order in Council under this section may only be made in relation to it with a view to the fulfilment of a treaty, convention, arrangement or engagement.

9

An Order in Council under this section shall be subject to annulment in pursuance of a resolution of either House of Parliament and may be varied or revoked by a subsequent Order.

10

In this section—

• “country” includes any territory;

• “dependent territory” means any of the Channel Islands or a colony;

• “relevant country” means a country which was specified in an Order in Council under this section at the time of the application under this section or such other time as may be specified in the Order in Council.