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Trade Marks Act 1994

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Legislation Crest

Trade Marks Act 1994

1994 CHAPTER 26

An Act to make new provision for registered trade marks, implementing Council Directive No. 89/104/EEC of 21st December 1988 to approximate the laws of the Member States relating to trade marks; to make provision in connection with Council Regulation (EC) No. 40/94 of 20th December 1993 on the Community trade mark; to give effect to the Madrid Protocol Relating to the International Registration of Marks of 27th June 1989, and to certain provisions of the Paris Convention for the Protection of Industrial Property of 20th March 1883, as revised and amended; and for connected purposes.

[21st July 1994]

Be it enacted by the Queen’s most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:—

Extent Information

E1Act extends to the United Kingdom and the Isle of Man see s. 108(2).

Modifications etc. (not altering text)

C1Act applied (with modifications) (I.O.M) (1.4.1996) by S.I. 1996/729, art. 2, Sch. (as amended (24.12.2002) by S.I. 2002/3148, art. 2 and (1.7.2004) by S.I. 2004/1497, art. 2, Sch.)

Act applied (14.8.1996) by S.I. 1996/1908, reg. 10(2)(3)

Commencement Information

I1Act not in force at Royal Assent see s. 109(1); Act partly in force for limited purposes temporarily 29.9.1994 by S.I. 1994/2550, art.3, Sch.; Act wholly in force 31.10.1994 by S.I. 1994/2550,art.2.

Part IU.K. Registered trade marks

IntroductoryU.K.

1 Trade marks.U.K.

[F1(1)In this Act “trade mark” means any sign which is capable—

(a)of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and

(b)of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.]

(2)References in this Act to a trade mark include, unless the context otherwise requires, references to a collective mark (see section 49) or certification mark (see section 50).

Textual Amendments

F1S. 1(1) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 3 (with Pt. 5)

2 Registered trade marks.U.K.

(1)A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.

(2)No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.

Grounds for refusal of registrationU.K.

3 Absolute grounds for refusal of registration.U.K.

(1)The following shall not be registered—

(a)signs which do not satisfy the requirements of section 1(1),

(b)trade marks which are devoid of any distinctive character,

(c)trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,

(d)trade marks which consist exclusively of signs or indications which have become customary in the current language or in thebona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

(2)A sign shall not be registered as a trade mark if it consists exclusively of—

(a)the shape[F2, or another characteristic,] which results from the nature of the goods themselves,

(b)the shape[F2, or another characteristic,] of goods which is necessary to obtain a technical result, or

(c)the shape[F2, or another characteristic,] which gives substantial value to the goods.

(3)A trade mark shall not be registered if it is—

(a)contrary to public policy or to accepted principles of morality, or

(b)of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).

(4)A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law F3... [F4other than law relating to trade marks].

[F5(4A)A trade mark is not to be registered if its registration is prohibited by or under—

(a)any enactment or rule of law, [F6or ]

F7(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(c)any international agreement to which the United Kingdom F8... is a party,

providing for the protection of designations of origin or geographical indications.

(4B)A trade mark is not to be registered if its registration is prohibited by or under—

(a)any [F9enactment or rule of law], or

(b)any international agreement to which the [F10United Kingdom] is a party,

providing for the protection of traditional terms for wine or traditional specialities guaranteed.

(4C)A trade mark is not to be registered if it—

(a)consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and

(b)is in respect of plant varieties of the same or closely related species.

(4D)Subsection (4C)(a) refers to registration in accordance with any—

(a)enactment or rule of law, [F11or]

F12(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(c)international agreement to which the United Kingdom F13... is a party,

providing for the protection of plant variety rights.]

(5)A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems).

(6)A trade mark shall not be registered if or to the extent that the application is made in bad faith.

Textual Amendments

F2Words in s. 3(2) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 4(2) (with Pt. 5)

F4Words in s. 3(4) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 4(3) (with Pt. 5)

F5S. 3(4A)-(4D) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 4(4) (with Pt. 5)

4 Specially protected emblems.U.K.

(1)A trade mark which consists of or contains—

(a)the Royal arms, or any of the principal armorial bearings of the Royal arms, or any insignia or device so nearly resembling the Royal arms or any such armorial bearing as to be likely to be mistaken for them or it,

(b)a representation of the Royal crown or any of the Royal flags,

(c)a representation of Her Majesty or any member of the Royal family, or any colourable imitation thereof, or

(d)words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation,

shall not be registered unless it appears to the registrar that consent has been given by or on behalf of Her Majesty or, as the case may be, the relevant member of the Royal family.

(2)A trade mark which consists of or contains a representation of—

(a)the national flag of the United Kingdom (commonly known as the Union Jack), or

(b)the flag of England, Wales, Scotland, Northern Ireland or the Isle of Man,

shall not be registered if it appears to the registrar that the use of the trade mark would be misleading or grossly offensive.

Provision may be made by rules identifying the flags to which paragraph (b) applies.

(3)A trade mark shall not be registered in the cases specified in—

  • section 57 (national emblems, &c. of Convention countries), or

  • section 58 (emblems, &c. of certain international organisations).

(4)Provision may be made by rules prohibiting in such cases as may be prescribed the registration of a trade mark which consists of or contains—

(a)arms to which a person is entitled by virtue of a grant of arms by the Crown, or

(b)insignia so nearly resembling such arms as to be likely to be mistaken for them,

unless it appears to the registrar that consent has been given by or on behalf of that person.

Where such a mark is registered, nothing in this Act shall be construed as authorising its use in any way contrary to the laws of arms.

[F14(5)A trade mark which consists of or contains a controlled representation within the meaning of the Olympic Symbol etc. (Protection) Act 1995 shall not be registered unless it appears to the registrar—

(a)that the application is made by the person for the time being appointed under section 1(2) of the Olympic Symbol etc. (Protection) Act 1995 (power of Secretary of State to appoint a person as the proprietor of the Olympics association right), or

(b)that consent has been given by or on behalf of the person mentioned in paragraph (a) above.]

Textual Amendments

F14S. 4(5) inserted (20.9.1995) by 1995 c. 32, s. 13(2) (with s. 13(3)); S.I. 1995/2472, art. 2

Commencement Information

I2S. 4 wholly in force at 31.10.1994; S. 4 not in force at Royal Assent see s. 109; s. 4(4) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 4 not already in force by S.I. 1994, arts. 2, 3(1), Sch.

5 Relative grounds for refusal of registration.U.K.

(1)A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.

(2)A trade mark shall not be registered if because—

(a)it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or

(b)it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

(3)A trade mark which—

(a)is identical with or similar to an earlier trade mark, and

F15(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom F16... and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

[F17(3A)Subsection (3) applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.]

(4)A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented—

(a)by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of [F18trade, where the condition in subsection (4A) is met,]

[F19(aa)by virtue of F20... any enactment or rule of law, providing for protection of designations of origin or geographical indications, where the condition in subsection (4B) is met, or]

(b)by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) [F21or (aa)] above, in particular by virtue of the law of copyright [F22or the law relating to industrial property rights].

A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an “earlier right” in relation to the trade mark.

[F23(4A)The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application.

(4B)The condition mentioned in subsection 4(aa) is that—

(a)an application for a designation of origin or a geographical indication has been submitted prior to the date of application for registration of the trade mark or the date of the priority claimed for that application, and

(b)the designation of origin or (as the case may be) geographical indication is subsequently registered.]

(5)Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.

[F24(6)Where an agent or representative (“R”) of the proprietor of a trade mark applies, without the proprietor’s consent, for the registration of the trade mark in R’s own name, the application is to be refused unless R justifies that action.]

Textual Amendments

F15S. 5(3)(b) and preceding word omitted (5.5.2004) by virtue of Trade Marks (Proof of Use, etc.) Regulations 2004 (S.I. 2004/946), regs. 1, 7(1)

F18Words in s. 5(4)(a) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 5(3) (with Pt. 5)

F19S. 5(4)(aa) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 5(4) (with Pt. 5)

F21Words in s. 5(4)(b) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 5(5)(a) (with Pt. 5)

F22Words in s. 5(4)(b) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 5(5)(b) (with Pt. 5)

F23S. 5(4A)(4B) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 5(6) (with Pt. 5)

[F255AGrounds for refusal relating to only some of the goods or servicesU.K.

Where grounds for refusal of an application for registration of a trade mark exist in respect of only some of the goods or services in respect of which the trade mark is applied for, the application is to be refused in relation to those goods and services only.]

Textual Amendments

6 Meaning of “earlier trade mark”.U.K.

(1)In this Act an “earlier trade mark” means—

(a)a registered trade mark F26... [F27or] international trade mark (UK) F28... which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks,

[F29(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;]

[F30(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;]

F31[F32(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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

(i)[F33prior to IP completion day] has been converted from a [F34European Union] trade mark or international trade mark (EC) which itself had a valid claim to seniority [F35of 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]

(c)a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention [F36or the WTO agreement] as a well known trade mark.

[F37(1A)In subsection (1), “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008.]

(2)References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of subsection (1)(a) F38..., subject to its being so registered [F39(taking account of subsection (2C))].

[F40(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.]

[F41(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)).]

F42(3). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

F33Words in s. 6(1)(ba)(i) inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 3 para. 4(5)(a) (with Sch. 5 para. 7(1)(1A), 8) (as amended by S.I. 2020/1637, regs. 1(6), 3, S.I. 2020/1661, regs. 1(2)(b), 12, 16(2), S.I. 2020/1050, regs. 1(2), 10(b) and (26.11.2021) by S.I. 2021/1235, regs. 3, 4); 2020 c. 1, Sch. 5 para. 1(1)

F36Words in s. 6(1)(c) inserted (29.7.1999) by S.I. 1999/1899, reg. 13(1)

F42S. 6(3) omitted (14.1.2019) by virtue of The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 7(3) (with Pt. 5)

Modifications etc. (not altering text)

[F436A Raising of relative grounds in opposition proceedings in case of non-use U.K.

(1)This section applies where—

(a)an application for registration of a trade mark has been published,

(b)there is an earlier trade mark [F44of a kind falling within section 6(1)(a), [F45(aa)] or (ba)] in relation to which the conditions set out in section 5(1), (2) or (3) obtain, and

(c)the registration procedure for the earlier trade mark was completed before the start of the [F46relevant period].

[F47(1A)In this section “the relevant period” means the period of 5 years ending with the date of the application for registration mentioned in subsection (1)(a) or (where applicable) the date of the priority claimed for that application.]

(2)In opposition proceedings, the registrar shall not refuse to register the trade mark by reason of the earlier trade mark unless the use conditions are met.

( 3 )The use conditions are met if—

(a)within the [F48relevant period] the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or services for which it is registered, or

(b)the earlier trade mark has not been so used, but there are proper reasons for non-use.

(4)For these purposes—

(a)use of a trade mark includes use in a form [F49(the “variant form”)] differing in elements which do not alter the distinctive character of the mark in the form in which it was registered [F50(regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)], and

(b)use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes.

F51(5). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

F52(5A). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(6)Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services.

(7)Nothing in this section affects—

(a)the refusal of registration on the grounds mentioned in section 3 (absolute grounds for refusal) or section 5(4)(relative grounds of refusal on the basis of an earlier right), or

(b)the making of an application for a declaration of invalidity under section 47(2) (application on relative grounds where no consent to registration).]

Textual Amendments

F44Words in s. 6A(1)(b) inserted (10.5.2008) by Trade Marks (Earlier Trade Marks) Regulations 2008 (S.I. 2008/1067), regs. 1, art. 4(2) (with reg. 6)

F46Words in s. 6A(1)(c) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 8(2) (with Pt. 5)

F48Words in s. 6A(3)(a) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 8(4) (with Pt. 5)

F49Words in s. 6A(4)(a) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 8(5)(a) (with Pt. 5)

F50Words in s. 6A(4)(a) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 8(5)(b) (with Pt. 5)

Modifications etc. (not altering text)

C5S. 6A applied (with modifications) by SI 1996/714, art. 10C(2) (as substituted (5.5.2004) by Trade Marks (International Registration) (Amendment) Order 2004 (S.I. 2004/948), arts. 1(2), 5 (with art. 8))

7 Raising of relative grounds in case of honest concurrent use.U.K.

(1)This section applies where on an application for the registration of a trade mark it appears to the registrar—

(a)that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or

(b)that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,

but the applicant shows to the satisfaction of the registrar that there has been honest concurrent use of the trade mark for which registration is sought.

(2)In that case the registrar shall not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.

(3)For the purposes of this section “honest concurrent use” means such use in the United Kingdom, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of section 12(2) of the M1Trade Marks Act 1938.

(4)Nothing in this section affects—

(a)the refusal of registration on the grounds mentioned in section 3 (absolute grounds for refusal), or

(b)the making of an application for a declaration of invalidity under section 47(2) (application on relative grounds where no consent to registration).

(5)This section does not apply when there is an order in force under section 8 below.

Marginal Citations

8 Power to require that relative grounds be raised in opposition proceedings.U.K.

(1)The Secretary of State may by order provide that in any case a trade mark shall not be refused registration on a ground mentioned in section 5 (relative grounds for refusal) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark or other earlier right.

(2)The order may make such consequential provision as appears to the Secretary of State appropriate—

(a)with respect to the carrying out by the registrar of searches of earlier trade marks, and

(b)as to the persons by whom an application for a declaration of invalidity may be made on the grounds specified in section 47(2) (relative grounds).

(3)An order making such provision as is mentioned in subsection (2)(a) may direct that so much of section 37 (examination of application) as requires a search to be carried out shall cease to have effect.

(4)An order making such provision as is mentioned in subsection (2)(b) may provide that so much of section 47(3) as provides that any person may make an application for a declaration of invalidity shall have effect subject to the provisions of the order.

(5)An order under this section shall be made by statutory instrument, and no order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.

No such draft of an order making such provision as is mentioned in subsection (1) shall be laid before Parliament until after the end of the period of ten years beginning with the day on which applications for Community trade marks may first be filed in pursuance of [F53Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade mark].

(6)An order under this section may contain such transitional provisions as appear to the Secretary of State to be appropriate.

Textual Amendments

Effects of registered trade markU.K.

9 Rights conferred by registered trade mark.U.K.

(1)The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.

The acts amounting to infringement, if done without the consent of the proprietor, are specified in [F54subsections (1) to (3) of] section 10.

[F55(1A)See subsection (3B) of section 10 for provision about certain other acts amounting to infringement of a registered trade mark.

(1B)Subsection (1) is without prejudice to the rights of proprietors acquired before the date of filing of the application for registration or (where applicable) the date of the priority claimed in respect of that application.]

(2)References in this Act to the infringement of a registered trade mark are to any F56... infringement of the rights of the proprietor [F57such as is mentioned in subsection (1) or (1A)].

(3)The rights of the proprietor have effect from the date of registration (which in accordance with section 40(3) is the date of filing of the application for registration):

Provided that—

(a)no infringement proceedings may be begun before the date on which the trade mark is in fact registered; and

(b)no offence under section 92 (unauthorised use of trade mark, &c. in relation to goods) is committed by anything done before the date of publication of the registration.

Textual Amendments

F54Words in s. 9(1) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 9(2) (with Pt. 5)

F55S. 9(1A)(1B) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 9(3) (with Pt. 5)

F56Word in s. 9(2) omitted (14.1.2019) by virtue of The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 9(4)(a) (with Pt. 5)

F57Words in s. 9(2) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 9(4)(b) (with Pt. 5)

10 Infringement of registered trade mark.U.K.

(1)A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2)A person infringes a registered trade mark if he uses in the course of trade a sign where because—

(a)the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b)the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

(3)A person infringes a registered trade mark if he uses in the course of trade[F58, in relation to goods or services,] a sign which—

(a)is identical with or similar to the trade mark, F59...

F59(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

[F60(3A)Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered.

(3B)Where the risk exists that the packaging, labels, tags, security or authenticity features or devices, or any other means to which the trade mark is affixed could be used in relation to goods or services and that use would constitute an infringement of the rights of the proprietor of the trade mark, a person infringes a registered trade mark if the person carries out in the course of trade any of the following acts—

(a)affixing a sign identical with, or similar to, the trade mark on packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark may be affixed; or

(b)offering or placing on the market, or stocking for those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark is affixed.]

(4)For the purposes of this section a person uses a sign if, in particular, he—

(a)affixes it to goods or the packaging thereof;

(b)offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;

(c)imports or exports goods under the sign;F61...

[F62(ca)uses the sign as a trade or company name or part of a trade or company name;]

(d)uses the sign on business papers [F63and] in advertising[F64; or]

[F65(e)uses the sign in comparative advertising in a manner that is contrary to the Business Protection from Misleading Marketing Regulations 2008.]

F66(5). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

F66(6). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

F59S. 10(3)(b) and preceding word omitted (5.5.2004) by virtue of Trade Marks (Proof of Use, etc.) Regulations 2004 (S.I. 2004/946), regs. 1, 7(2)(b)

F60S. 10(3A)(3B) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 10(2) (with Pt. 5)

F61Word in s. 10(4)(c) omitted (14.1.2019) by virtue of The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 10(3) (with Pt. 5)

F62S. 10(4)(ca) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 10(4) (with Pt. 5)

F63Word in s. 10(4)(d) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 10(5)(a) (with Pt. 5)

F64Word in s. 10(4)(d) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 10(5)(b) (with Pt. 5)

F65S. 10(4)(e) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 10(6) (with Pt. 5)

F66S. 10(5)(6) omitted (14.1.2019) by virtue of The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 10(7) (with Pt. 5)

[F6710ARight to prevent goods entering the UK without being released for free circulationU.K.

(1)The proprietor of a registered trade mark is entitled to prevent third parties from bringing goods into the United Kingdom in the course of trade without being released for free circulation if they are goods for which the trade mark is registered which—

(a)come from outside the customs territory of the [F68United Kingdom]; and

(b)bear without authorisation a sign which is identical with the trade mark or cannot be distinguished in its essential aspects from the trade mark.

(2)In subsection (1) the reference to goods for which the trade mark is registered includes a reference to the packaging of goods for which the trade mark is registered.

(3)Subsection (1) is without prejudice to the rights of proprietors acquired before the date of application for registration of the trade mark, or (where applicable) the date of the priority claimed in respect of that application.

(4)The entitlement of the proprietor under subsection (1) is to lapse if—

(a)proceedings are initiated in accordance with the European Customs Enforcement Regulation to determine whether the trade mark has been infringed; and

(b)during those proceedings evidence is provided by the declarant or the holder of the goods that the proprietor of the trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.

(5)References in this Act to the “European Customs Enforcement Regulation” are references to Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights [F69as amended from time to time].

Textual Amendments

F67Ss. 10A, 10B inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 11 (with Pt. 5)

10BProhibition on the use of a trade mark registered in the name of an agent or representativeU.K.

(1)Subsection (2) applies where a trade mark is registered in the name of an agent or representative of a person (“P”) who is the proprietor of the trade mark, without P’s consent.

(2)Unless the agent or representative justifies the action mentioned in subsection (1), P may do either or both of the following—

(a)prevent the use of the trade mark by the agent or representative (notwithstanding the rights conferred by this Act in relation to a registered trade mark);

(b)apply for the rectification of the register so as to substitute P’s name as the proprietor of the registered trade mark.]

Textual Amendments

F67Ss. 10A, 10B inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 11 (with Pt. 5)

11 Limits on effect of registered trade mark.U.K.

(1)A registered trade mark is not infringed by the use of [F70a later registered trade mark where that later registered trade mark would not be declared invalid pursuant to section 47(2A) or (2G) or section 48(1)].

F71[F72(1A). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(1B)Where subsection (1) F73... applies, the later registered trade mark is not infringed by the use of the earlier trade mark even though the earlier trade mark may no longer be invoked against the later registered trade mark.]

(2)A registered trade mark is not infringed by—

(a)the use by [F74an individual] of his own name or address,

(b)the use of [F75signs or indications which are not distinctive or which concern] the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or

(c)the use of the trade mark [F76for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular where that use] is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),

provided the use is in accordance with honest practices in industrial or commercial matters.

(3)A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality.

For this purpose an “earlier right” means an unregistered trade mark or other sign continuously used in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of—

(a)the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or

(b)the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his;

and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off).

Textual Amendments

F70Words in s. 11(1) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 12(2) (with Pt. 5)

F72S. 11(1A)(1B) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 12(3) (with Pt. 5)

F74Words in s. 11(2)(a) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 12(4) (with Pt. 5)

F75Words in s. 11(2)(b) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 12(5) (with Pt. 5)

F76Words in s. 11(2)(c) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 12(6) (with Pt. 5)

[F7711ANon-use as defence in infringement proceedingsU.K.

(1)The proprietor of a trade mark is entitled to prohibit the use of a sign only to the extent that the registration of the trade mark is not liable to be revoked pursuant to section 46(1)(a) or (b) (revocation on basis of non-use) at the date the action for infringement is brought.

(2)Subsection (3) applies in relation to an action for infringement of a registered trade mark where the registration procedure for the trade mark was completed before the start of the period of five years ending with the date the action is brought.

(3)If the defendant so requests, the proprietor of the trade mark must furnish proof—

(a)that during the five-year period preceding the date the action for infringement is brought, the trade mark has been put to genuine use in the United Kingdom by or with the consent of the proprietor in relation to the goods and services for which it is registered and which are cited as justification for the action, or

(b)that there are proper reasons for non-use.

(4)Nothing in subsections (2) and (3) overrides any provision of section 46, as applied by subsection (1) (including the words from “Provided that” to the end of subsection (3)).]

Textual Amendments

12 Exhaustion of rights conferred by registered trade mark.U.K.

(1)A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in [F78the United Kingdom or] the European Economic Area under that trade mark by the proprietor or with his consent.

(2)Subsection (1) does not apply where there exist legitimate reasons for the proprietor to oppose further dealings in the goods (in particular, where the condition of the goods has been changed or impaired after they have been put on the market).

Textual Amendments

13 Registration subject to disclaimer or limitation.U.K.

(1)An applicant for registration of a trade mark, or the proprietor of a registered trade mark, may—

(a)disclaim any right to the exclusive use of any specified element of the trade mark, or

(b)agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation;

and where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 9 (rights conferred by registered trade mark) are restricted accordingly.

(2)Provision shall be made by rules as to the publication and entry in the register of a disclaimer or limitation.

Commencement Information

I3S. 13 wholly in force at 31.10.1994; s. 13 not in force at Royal Assent see s. 109; s. 13(2) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 13 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

Infringement proceedingsU.K.

14 Action for infringement.U.K.

(1)An infringement of a registered trade mark is actionable by the proprietor of the trade mark.

(2)In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise is available to him as is available in respect of the infringement of any other property right.

15 Order for erasure, &c. of offending sign.U.K.

(1)Where a person is found to have infringed a registered trade mark, the court may make an order requiring him—

(a)to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control, or

(b)if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction of the infringing goods, material or articles in question.

(2)If an order under subsection (1) is not complied with, or it appears to the court likely that such an order would not be complied with, the court may order that the infringing goods, material or articles be delivered to such person as the court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be.

Modifications etc. (not altering text)

C7S. 15: power to apply conferred (20.9.1995) by 1995 c. 32, s. 7(1); S.I. 1995/2472, art. 2

16 Order for delivery up of infringing goods, material or articles.U.K.

(1)The proprietor of a registered trade mark may apply to the court for an order for the delivery up to him, or such other person as the court may direct, of any infringing goods, material or articles which a person has in his possession, custody or control in the course of a business.

(2)An application shall not be made after the end of the period specified in section 18 (period after which remedy of delivery up not available); and no order shall be made unless the court also makes, or it appears to the court that there are grounds for making, an order under section 19 (order as to disposal of infringing goods, &c.).

(3)A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this section shall, if an order under section 19 is not made, retain them pending the making of an order, or the decision not to make an order, under that section.

(4)Nothing in this section affects any other power of the court.

Modifications etc. (not altering text)

C8S. 16: power to apply conferred (20.9.1995) by 1995 c. 32, 7(1); S.I. 1995/2472, art. 2

17 Meaning of “infringing goods, material or articles”.U.K.

(1)In this Act the expressions “infringing goods”, “infringing material” and “infringing articles” shall be construed as follows.

(2)Goods are “infringing goods”, in relation to a registered trade mark, if they or their packaging bear a sign identical or similar to that mark and—

(a)the application of the sign to the goods or their packaging was an infringement of the registered trade mark, or

(b)the goods are proposed to be imported into the United Kingdom and the application of the sign in the United Kingdom to them or their packaging would be an infringement of the registered trade mark, or

(c)the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trade mark.

(3)Nothing in subsection (2) shall be construed as affecting the importation of goods which may lawfully be imported into the United Kingdom by virtue of [F79anything which forms part of retained EU law as a result of section 3 or 4 of the European Union (Withdrawal) Act 2018].

(4)Material is “infringing material”, in relation to a registered trade mark if it bears a sign identical or similar to that mark and either—

(a)it is used for labelling or packaging goods, as a business paper, or for advertising goods or services, in such a way as to infringe the registered trade mark, or

(b)it is intended to be so used and such use would infringe the registered trade mark.

(5)“Infringing articles”, in relation to a registered trade mark, means articles—

(a)which are specifically designed or adapted for making copies of a sign identical or similar to that mark, and

(b)which a person has in his possession, custody or control, knowing or having reason to believe that they have been or are to be used to produce infringing goods or material.

Textual Amendments

18 Period after which remedy of delivery up not available.U.K.

(1)An application for an order under section 16 (order for delivery up of infringing goods, material or articles) may not be made after the end of the period of six years from—

(a)in the case of infringing goods, the date on which the trade mark was applied to the goods or their packaging,

(b)in the case of infringing material, the date on which the trade mark was applied to the material, or

(c)in the case of infringing articles, the date on which they were made,

except as mentioned in the following provisions.

(2)If during the whole or part of that period the proprietor of the registered trade mark—

(a)is under a disability, or

(b)is prevented by fraud or concealment from discovering the facts entitling him to apply for an order,

an application may be made at any time before the end of the period of six years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.

(3)In subsection (2) “disability”—

(a)in England and Wales, has the same meaning as in the M2Limitation Act 1980;

(b)in Scotland, means legal disability within the meaning of the M3Prescription and Limitation (Scotland) Act 1973;

(c)in Northern Ireland, has the same meaning as in the M4Limitation (Northern Ireland) Order 1989.

Modifications etc. (not altering text)

C9S. 18: power to apply conferred (20.9.1995) by 1995 c. 32, s. 7(1); S.I. 1995/2472, art. 2

Marginal Citations

19 Order as to disposal of infringing goods, material or articles.U.K.

(1)Where infringing goods, material or articles have been delivered up in pursuance of an order under section 16, an application may be made to the court—

(a)for an order that they be destroyed or forfeited to such person as the court may think fit, or

(b)for a decision that no such order should be made.

(2)In considering what order (if any) should be made, the court shall consider whether other remedies available in an action for infringement of the registered trade mark would be adequate to compensate the proprietor and any licensee and protect their interests.

(3)Provision shall be made by rules of court as to the service of notice on persons having an interest in the goods, material or articles, and any such person is entitled—

(a)to appear in proceedings for an order under this section, whether or not he was served with notice, and

(b)to appeal against any order made, whether or not he appeared;

and an order shall not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal.

(4)Where there is more than one person interested in the goods, material or articles, the court shall make such order as it thinks just.

(5)If the court decides that no order should be made under this section, the person in whose possession, custody or control the goods, material or articles were before being delivered up is entitled to their return.

(6)References in this section to a person having an interest in goods, material or articles include any person in whose favour an order could be made

[F80(a)under this section F81...;

(b)under section 24D of the Registered Designs Act 1949;

(c)under section 114, 204 or 231 of the Copyright, Designs and Patents Act 1988; or

(d)under regulation 1C of the Community Design Regulations 2005 (SI 2005/2339).]

Textual Amendments

F80 S. 19(6)(a)-(d) substituted for words in s 19(6) (29.4.2006) by Intellectual Property (Enforcement, etc) Regulations 2006 (S.I. 2006/1028), art. 1, Sch. 2 para. 16

Modifications etc. (not altering text)

C10S. 19: power to apply conferred (20.9.1995) by 1995 c. 32, S.I. 1995/2472, art. 2

20 Jurisdiction of sheriff court or county court in Northern Ireland.U.K.

Proceedings for an order under section 16 (order for delivery up of infringing goods, material or articles) or section 19 (order as to disposal of infringing goods, &c.) may be brought—

(a)in the sheriff court in Scotland, or

(b)in a county court in Northern Ireland.

This does not affect the jurisdiction of the Court of Session or the High Court in Northern Ireland.

Modifications etc. (not altering text)

C11S. 20: power to apply conferred (20.9.1995) by 1995 c. 32, s. 7(1); S.I. 1995/2472, art. 2

[F82Unjustified threatsU.K.

Textual Amendments

F82Ss. 21-21F and cross-heading substituted for s. 21 (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 2(2), 8; S.I. 2017/771, reg. 2(1)(b) (with reg. 3)

21Threats of infringement proceedingsU.K.

(1)A communication contains a “threat of infringement proceedings” if a reasonable person in the position of a recipient would understand from the communication that—

(a)a registered trade mark exists, and

(b)a person intends to bring proceedings (whether in a court in the United Kingdom or elsewhere) against another person for infringement of the registered trade mark by—

(i)an act done in the United Kingdom, or

(ii)an act which, if done, would be done in the United Kingdom.

(2)References in this section and in section 21C to a “recipient” include, in the case of a communication directed to the public or a section of the public, references to a person to whom the communication is directed.

21AActionable threatsU.K.

(1)Subject to subsections (2) to (6), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat.

(2)A threat of infringement proceedings is not actionable if the infringement is alleged to consist of—

(a)applying, or causing another person to apply, a sign to goods or their packaging,

(b)importing, for disposal, goods to which, or to the packaging of which, a sign has been applied, or

(c)supplying services under a sign.

(3)A threat of infringement proceedings is not actionable if the infringement is alleged to consist of an act which, if done, would constitute an infringement of a kind mentioned in subsection (2)(a), (b) or (c).

(4)A threat of infringement proceedings is not actionable if the threat—

(a)is made to a person who has done, or intends to do, an act mentioned in subsection (2)(a) or (b) in relation to goods or their packaging, and

(b)is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to those goods or their packaging.

(5)A threat of infringement proceedings is not actionable if the threat—

(a)is made to a person who has done, or intends to do, an act mentioned in subsection (2)(c) in relation to services, and

(b)is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to those services.

(6)A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.

(7)In sections 21C and 21D “an actionable threat” means a threat of infringement proceedings that is actionable in accordance with this section.

21BPermitted communicationsU.K.

(1)For the purposes of section 21A(6), a communication containing a threat of infringement proceedings is a “permitted communication” if—

(a)the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;

(b)all of the information that relates to the threat is information that—

(i)is necessary for that purpose (see subsection (5)(a) to (c) for some examples of necessary information), and

(ii)the person making the communication reasonably believes is true.

(2)Each of the following is a “permitted purpose”—

(a)giving notice that a registered trade mark exists;

(b)discovering whether, or by whom, a registered trade mark has been infringed by an act mentioned in section 21A(2)(a), (b) or (c);

(c)giving notice that a person has a right in or under a registered trade mark, where another person's awareness of the right is relevant to any proceedings that may be brought in respect of the registered trade mark.

(3)The court may, having regard to the nature of the purposes listed in subsection (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.

(4)But the following may not be treated as a “permitted purpose”—

(a)requesting a person to cease using, in the course of trade, a sign in relation to goods or services,

(b)requesting a person to deliver up or destroy goods, or

(c)requesting a person to give an undertaking relating to the use of a sign in relation to goods or services.

(5)If any of the following information is included in a communication made for a permitted purpose, it is information that is “necessary for that purpose” (see subsection (1)(b)(i))—

(a)a statement that a registered trade mark exists and is in force or that an application for the registration of a trade mark has been made;

(b)details of the registered trade mark, or of a right in or under the registered trade mark, which—

(i)are accurate in all material respects, and

(ii)are not misleading in any material respect; and

(c)information enabling the identification of the goods or their packaging, or the services, in relation to which it is alleged that the use of a sign constitutes an infringement of the registered trade mark.

21CRemedies and defencesU.K.

(1)Proceedings in respect of an actionable threat may be brought against the person who made the threat for—

(a)a declaration that the threat is unjustified;

(b)an injunction against the continuance of the threat;

(c)damages in respect of any loss sustained by the aggrieved person by reason of the threat.

(2)It is a defence for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an infringement of the registered trade mark.

(3)It is a defence for the person who made the threat to show—

(a)that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in section 21A(2)(a), (b) or (c) in relation to the goods or their packaging or the services which are the subject of the threat, and

(b)that the person notified the recipient, before or at the time of making the threat, of the steps taken.

21DProfessional advisersU.K.

(1)Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in subsection (3) are met.

(2)In this section “professional adviser” means a person who, in relation to the making of the communication containing the threat—

(a)is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and

(b)is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).

(3)The conditions are that—

(a)in making the communication the professional adviser is acting on the instructions of another person, and

(b)when the communication is made the professional adviser identifies the person on whose instructions the adviser is acting.

(4)This section does not affect any liability of the person on whose instructions the professional adviser is acting.

(5)It is for a person asserting that subsection (1) applies to prove (if required) that at the material time—

(a)the person concerned was acting as a professional adviser, and

(b)the conditions in subsection (3) were met.

21ESupplementary: pending registrationU.K.

(1)In sections 21 and 21B references to a registered trade mark include references to a trade mark in respect of which an application for registration has been published under section 38.

(2)Where the threat of infringement proceedings is made after an application for registration has been published (but before registration) the reference in section 21C(2) to “the registered trade mark” is to be treated as a reference to the trade mark registered in pursuance of that application.

21FSupplementary: proceedings for delivery up etc.U.K.

In section 21(1)(b) the reference to proceedings for infringement of a registered trade mark includes a reference to—

(a)proceedings for an order under section 16 (order for delivery up of infringing goods, material or articles), and

(b)proceedings for an order under section 19 (order as to disposal of infringing goods, material or articles).]

Registered trade mark as object of propertyU.K.

22 Nature of registered trade mark.U.K.

A registered trade mark is personal property (in Scotland, incorporeal moveable property).

Modifications etc. (not altering text)

C12S. 22 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 5

23 Co-ownership of registered trade mark.U.K.

(1)Where a registered trade mark is granted to two or more persons jointly, each of them is entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trade mark.

(2)The following provisions apply where two or more persons are co-proprietors of a registered trade mark, by virtue of subsection (1) or otherwise.

(3)Subj19940929ect to any agreement to the contrary, each co-proprietor is entitled, by himself or his agents, to do for his own benefit and without the consent of or the need to account to the other or others, any act which would otherwise amount to an infringement of the registered trade mark.

(4)One co-proprietor may not without the consent of the other or others—

(a)grant a licence to use the registered trade mark, or

(b)assign or charge his share in the registered trade mark (or, in Scotland, cause or permit security to be granted over it).

(5)Infringement proceedings may be brought by any co-proprietor, but he may not, without the leave of the court, proceed with the action unless the other, or each of the others, is either joined as a plaintiff or added as a defendant.

A co-proprietor who is thus added as a defendant shall not be made liable for any costs in the action unless he takes part in the proceedings.

Nothing in this subsection affects the granting of interlocutory relief on the application of a single co-proprietor.

(6)Nothing in this section affects the mutual rights and obligations of trustees or personal representatives, or their rights and obligations as such.

Modifications etc. (not altering text)

C13S. 23 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 5

24 Assignment, &c. of registered trade mark.U.K.

(1)A registered trade mark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property.

It is so transmissible either in connection with the goodwill of a business or independently.

[F83(1A)A contractual obligation to transfer a business is to be taken to include an obligation to transfer any registered trade mark, except where there is agreement to the contrary or it is clear in all the circumstances that this presumption should not apply.]

(2)An assignment or other transmission of a registered trade mark may be partial, that is, limited so as to apply—

(a)in relation to some but not all of the goods or services for which the trade mark is registered, or

(b)in relation to use of the trade mark in a particular manner or a particular locality.

(3)An assignment of a registered trade mark, or an assent relating to a registered trade mark, is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative.

Except in Scotland, this requirement may be satisfied in a case where the assignor or personal representative is a body corporate by the affixing of its seal.

(4)The above provisions apply to assignment by way of security as in relation to any other assignment.

(5)A registered trade mark may be the subject of a charge (in Scotland, security) in the same way as other personal or moveable property.

(6)Nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trade mark as part of the goodwill of a business.

Textual Amendments

F83S. 24(1A) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 14 (with Pt. 5)

Modifications etc. (not altering text)

C14S. 24 applied (except s. 24(2)(b)) (with modifications) (1.4.1996) by S.I. 1996/714, art. 5

25 Registration of transactions affecting registered trade mark.U.K.

(1)On application being made to the registrar by—

(a)a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction, or

(b)any other person claiming to be affected by such a transaction,

the prescribed particulars of the transaction shall be entered in the register.

(2)The following are registrable transactions—

(a)an assignment of a registered trade mark or any right in it;

(b)the grant of a licence under a registered trade mark;

(c)the granting of any security interest (whether fixed or floating) over a registered trade mark or any right in or under it;

(d)the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it;

(e)an order of a court or other competent authority transferring a registered trade mark or any right in or under it.

(3)Until an application has been made for registration of the prescribed particulars of a registrable transaction—

(a)the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of it, and

(b)a person claiming to be a licensee by virtue of the transaction does not have the protection of section 30 or 31 (rights and remedies of licensee in relation to infringement).

(4)Where a person becomes the proprietor or a licensee of a registered trade mark by virtue of a registrable transaction [F84and the mark is infringed before the prescribed particulars of the transaction are registered, in proceedings for such an infringement, the court shall not award him costs unless—

(a)an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning with its date, or

(b)the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter.]

(5)Provision may be made by rules as to—

(a)the amendment of registered particulars relating to a licence so as to reflect any alteration of the terms of the licence, and

(b)the removal of such particulars from the register—

(i)where it appears from the registered particulars that the licence was granted for a fixed period and that period has expired, or

(ii)where no such period is indicated and, after such period as may be prescribed, the registrar has notified the parties of his intention to remove the particulars from the register.

(6)Provision may also be made by rules as to the amendment or removal from the register of particulars relating to a security interest on the application of, or with the consent of, the person entitled to the benefit of that interest.

Textual Amendments

Commencement Information

I4S. 25 wholly in force 31.10.1994; s. 25 not in force at Royal Assent see s. 109; s. 25(1)(5)(6) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 25 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

26 Trusts and equities.U.K.

(1)No notice of any trust (express, implied or constructive) shall be entered in the register; and the registrar shall not be affected by any such notice.

(2)Subject to the provisions of this Act, equities (in Scotland, rights) in respect of a registered trade mark may be enforced in like manner as in respect of other personal or moveable property.

Modifications etc. (not altering text)

C15S. 26 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 5

27 Application for registration of trade mark as an object of property.U.K.

(1)The provisions of sections 22 to 26 (which relate to a registered trade mark as an object of property) [F85and sections 28 to 31 (which relate to licensing)] apply, with the necessary modifications, in relation to an application for the registration of a trade mark as in relation to a registered trade mark.

(2)In section 23 (co-ownership of registered trade mark) as it applies in relation to an application for registration the reference in subsection (1) to the granting of the registration shall be construed as a reference to the making of the application.

(3)In section 25 (registration of transactions affecting registered trade marks) as it applies in relation to a transaction affecting an application for the registration of a trade mark, the references to the entry of particulars in the register, and to the making of an application to register particulars, shall be construed as references to the giving of notice to the registrar of those particulars.

Textual Amendments

F85Words in s. 27(1) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 15 (with Pt. 5)

LicensingU.K.

28 Licensing of registered trade mark.U.K.

(1)A licence to use a registered trade mark may be general or limited.

A limited licence may, in particular, apply—

(a)in relation to some but not all of the goods or services for which the trade mark is registered, or

(b)in relation to use of the trade mark in a particular manner or a particular locality.

(2)A licence is not effective unless it is in writing signed by or on behalf of the grantor.

Except in Scotland, this requirement may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.

(3)Unless the licence provides otherwise, it is binding on a successor in title to the grantor’s interest.

References in this Act to doing anything with, or without, the consent of the proprietor of a registered trade mark shall be construed accordingly.

(4)Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include a sub-licence or sub-licensee.

[F86(5)The proprietor of a registered trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in the licence with regard to—

(a)its duration,

(b)the form covered by the registration in which the trade mark may be used,

(c)the scope of the goods or services for which the licence is granted,

(d)the territory in which the trade mark may be affixed, or

(e)the quality of the goods manufactured or of the services provided by the licensee.]

Textual Amendments

29 Exclusive licences.U.K.

(1)In this Act an “exclusive licence” means a licence (whether general or limited) authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence.

The expression “exclusive licensee” shall be construed accordingly.

(2)An exclusive licensee has the same rights against a successor in title who is bound by the licence as he has against the person granting the licence.

30 General provisions as to rights of licensees in case of infringement.U.K.

(1)This section has effect with respect to the rights of a licensee in relation to infringement of a registered trade mark.

The provisions of this section do not apply where or to the extent that, by virtue of section 31(1) below (exclusive licensee having rights and remedies of assignee), the licensee has a right to bring proceedings in his own name.

[F87(1A)Except so far as the licence provides otherwise a licensee may only bring proceedings for infringement of the registered trade mark with the consent of the proprietor (but see subsections (2) and (3)).]

(2)[F88An exclusive licensee may] call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects his interests.

(3)If the proprietor [F89mentioned in subsection (2)]—

(a)refuses to do so, or

(b)fails to do so within two months after being called upon,

the [F89exclusive] licensee may bring the proceedings in his own name as if he were the proprietor.

(4)Where infringement proceedings are brought by a licensee by virtue of this section [F90or with the consent of the proprietor or pursuant to the licence], the licensee may not, without the leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant.

This does not affect the granting of interlocutory relief on an application by a licensee alone.

(5)A proprietor who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.

(6)In infringement proceedings brought by the proprietor of a registered trade mark any loss suffered or likely to be suffered by licensees shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of licensees.

[F91(6A)Where the proprietor of a registered trade mark brings infringement proceedings, a licensee who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.]

(7)The provisions of this section apply in relation to an exclusive licensee if or to the extent that he has, by virtue of section 31(1), the rights and remedies of an assignee as if he were the proprietor of the registered trade mark.

Textual Amendments

F88Words in s. 30(2) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 17(3) (with Pt. 5)

F89Words in s. 30(3) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 17(4) (with Pt. 5)

F90Words in s. 30(4) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 17(5) (with Pt. 5)

31 Exclusive licensee having rights and remedies of assignee.U.K.

(1)An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

Where or to the extent that such provision is made, the licensee is entitled, subject to the provisions of the licence and to the following provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in his own name.

(2)Any such rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trade mark; and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement shall be construed accordingly.

(3)In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trade mark.

(4)Where proceedings for infringement of a registered trade mark brought by the proprietor or an exclusive licensee relate wholly or partly to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.

This does not affect the granting of interlocutory relief on an application by a proprietor or exclusive licensee alone.

(5)A person who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.

(6)Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action—

(a)the court shall in assessing damages take into account—

(i)the terms of the licence, and

(ii)any pecuniary remedy already awarded or available to either of them in respect of the infringement;

(b)no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and

(c)the court shall if an account of profits is directed apportion the profits between them as the court considers just, subject to any agreement between them.

The provisions of this subsection apply whether or not the proprietor and the exclusive licensee are both parties to the action; and if they are not both parties the court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.

(7)The proprietor of a registered trade mark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 16 (order for delivery up); and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.

(8)The provisions of subsections (4) to (7) above have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor.

Application for registered trade markU.K.

32 Application for registration.U.K.

(1)An application for registration of a trade mark shall be made to the registrar.

(2)The application shall contain—

(a)a request for registration of a trade mark,

(b)the name and address of the applicant,

(c)a statement of the goods or services in relation to which it is sought to register the trade mark, and

(d)a representation of the trade mark[F92, which is capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor].

(3)The application shall state that the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has abona fide intention that it should be so used.

(4)The application shall be subject to the payment of the application fee and such class fees as may be appropriate.

Textual Amendments

F92Words in s. 32(2)(d) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 18 (with Pt. 5)

33 Date of filing.U.K.

(1)The date of filing of an application for registration of a trade mark is the date on which documents containing everything required by section 32(2) are furnished to the registrar by the applicant.

If the documents are furnished on different days, the date of filing is the last of those days.

(2)References in this Act to the date of application for registration are to the date of filing of the application.

34 Classification of trade marks.U.K.

(1)Goods and services shall be classified for the purposes of the registration of trade marks according to a prescribed system of classification.

(2)Any question arising as to the class within which any goods or services fall shall be determined by the registrar, whose decision shall be final.

Commencement Information

I5S. 34 wholly in force at 31.10.1994; s. 34 not in force at Royal Assent see s. 109; s. 34(1) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 34 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

PriorityU.K.

35 Claim to priority of Convention application.U.K.

(1)A person who has duly filed an application for protection of a trade mark in a Convention country (a “Convention application”), or his successor in title, has a right to priority, for the purposes of registering the same trade mark under this Act for some or all of the same goods or services, for a period of six months from the date of filing of the first such application.

(2)If the application for registration under this Act is made within that six-month period—

(a)the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first Convention application, and

(b)the registrability of the trade mark shall not be affected by any use of the mark in the United Kingdom in the period between that date and the date of the application under this Act.

(3)Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority.

A “regular national filing” means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent fate of the application.

(4)A subsequent application concerning the same subject as the first Convention application, filed in the same Convention country, shall be considered the first Convention application (of which the filing date is the starting date of the period of priority), if at the time of the subsequent application—

(a)the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding, and

(b)it has not yet served as a basis for claiming a right of priority.

The previous application may not thereafter serve as a basis for claiming a right of priority.

(5)Provision may be made by rules as to the manner of claiming a right to priority on the basis of a Convention application.

(6)A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either with the application or independently.

The reference in subsection (1) to the applicant’s “successor in title” shall be construed accordingly.

Commencement Information

I6S. 35 wholly in force at 31.10.1994; s. 35 not in force at Royal Assent see s. 109; s. 35(5) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 35 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

36 Claim to priority from other relevant overseas application.U.K.

(1)Her Majesty may by Order in Council make provision for conferring on a person who has duly filed an application for protection of a trade mark in—

(a)any of the Channel Islands or a colony, or

(b)a country or territory in relation to which Her Majesty’s Government in the United Kingdom have entered into a treaty, convention, arrangement or engagement for the reciprocal protection of trade marks,

a right to priority, for the purpose of registering the same trade mark under this Act for some or all of the same goods or services, for a specified period from the date of filing of that application.

(2)An Order in Council under this section may make provision corresponding to that made by section 35 in relation to Convention countries or such other provision as appears to Her Majesty to be appropriate.

(3)A statutory instrument containing an Order in Council under this section shall be subject to annulment in pursuance of a resolution of either House of Parliament.

Registration procedureU.K.

37 Examination of application.U.K.

(1)The registrar shall examine whether an application for registration of a trade mark satisfies the requirements of this Act (including any requirements imposed by rules).

(2)[F93For that purpose he shall carry out a search, to such extent as he considers necessary, of earlier trade marks. ]

(3)If it appears to the registrar that the requirements for registration are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to amend the application.

(4)If the applicant fails to satisfy the registrar that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse to accept the application.

(5)If it appears to the registrar that the requirements for registration are met, he shall accept the application.

Textual Amendments

F93S. 37(2) ceases to have effect (1.10.2007) by virtue of Trade Marks (Relative Grounds) Order 2007 (S.I. 2007/1976), arts. 1, 3 (with art. 6)

38 Publication, opposition proceedings and observations.U.K.

(1)When an application for registration has been accepted, the registrar shall cause the application to be published in the prescribed manner.

(2)Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration.

The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.

[F94(2A)Where a notice of opposition is filed on the basis of one or more earlier trade marks or other earlier rights—

(a)the rights (if plural) must all belong to the same proprietor;

(b)the notice may be filed on the basis of part, or the totality, of the goods or services in respect of which the earlier right is protected or applied for.

(2B)A notice of opposition may be directed against part or the totality of the goods or services in respect of which the contested mark is applied for.]

(3)Where an application has been published, any person may, at any time before the registration of the trade mark, make observations in writing to the registrar as to whether the trade mark should be registered; and the registrar shall inform the applicant of any such observations.

A person who makes observations does not thereby become a party to the proceedings on the application.

Textual Amendments

F94S. 38(2A)(2B) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 19(2) (with Pt. 5)

Commencement Information

I7S. 38 wholly in force at 31.10.1994; s. 38 not in force at Royal Assent see s. 109; s. 38(1)(2) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 38 not already in force by S.I. 1994/2550, art. 2, 3(1), Sch.

39 Withdrawal, restriction or amendment of application.U.K.

(1)The applicant may at any time withdraw his application or restrict the goods or services covered by the application.

If the application has been published, the withdrawal or restriction shall also be published.

(2)In other respects, an application may be amended, at the request of the applicant, only by correcting—

(a)the name or address of the applicant,

(b)errors of wording or of copying, or

(c)obvious mistakes,

and then only where the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application.

(3)Provision shall be made by rules for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application, and for the making of objections by any person claiming to be affected by it.

Commencement Information

I8S. 39 wholly in force at 31.10.1994; s. 39 not in force at Royal Assent see s. 109; s. 39(3) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 39 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

40 Registration.U.K.

(1)Where an application has been accepted and—

(a)no notice of opposition is given within the period referred to in section 38(2), or

(b)all opposition proceedings are withdrawn or decided in favour of the applicant,

the registrar shall register the trade mark, unless it appears to him having regard to matters coming to his notice [F95since the application was accepted that the registration requirements (other than those mentioned in section 5(1), (2) or (3)) were not met at that time.]

(2)A trade mark shall not be registered unless any fee prescribed for the registration is paid within the prescribed period.

If the fee is not paid within that period, the application shall be deemed to be withdrawn.

(3)A trade mark when registered shall be registered as of the date of filing of the application for registration; and that date shall be deemed for the purposes of this Act to be the date of registration.

(4)On the registration of a trade mark the registrar shall publish the registration in the prescribed manner and issue to the applicant a certificate of registration.

Textual Amendments

F95Words in s. 40(1) substituted (5.5.2004) by Trade Marks (Proof of Use, etc.) Regulations 2004 (S.I. 2004/946), regs. 1, 5 (with reg. 8)

Commencement Information

I9S. 40 wholly in force at 31.10.1994; s. 40 not in force at Royal Assent see s. 109; s. 40(4) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 40 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

41 Registration: supplementary provisions.U.K.

(1)Provision may be made by rules as to—

(a)the division of an application for the registration of a trade mark into several applications;

[F96(aa)the division of a registration of a trade mark into several registrations;]

(b)the merging of separate applications or registrations;

(c)the registration of a series of trade marks.

(2)A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.

(3)Rules under this section may include provision as to—

(a)the circumstances in which, and conditions subject to which, division, merger or registration of a series is permitted, and

(b)the purposes for which an application [F97or registration] to which the rules apply is to be treated as a single application [F97or registration] and those for which it is to be treated as a number of separate applications [F97or registrations].

Textual Amendments

F96S. 41(1)(aa) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 20(2) (with Pt. 5)

F97Words in s. 41(3)(b) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 20(3) (with Pt. 5)

Commencement Information

I10S. 41 wholly in force at 31.10.1994; s. 41 not in force at Royal Assent see s. 109; s. 41(1)(3) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 41 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

Duration, renewal and alteration of registered trade markU.K.

42 Duration of registration.U.K.

(1)A trade mark shall be registered for a period of ten years from the date of registration.

(2)Registration may be renewed in accordance with section 43 for further periods of ten years.

43 Renewal of registration.U.K.

(1)The registration of a trade mark may be renewed at the request of the proprietor, subject to payment of a renewal fee.

(2)Provision shall be made by rules for the registrar to inform the proprietor of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.

(3)A request for renewal must be made, and the renewal fee paid, before the expiry of the registration.

Failing this, the request may be made and the fee paid within such further period (of not less than six months) as may be prescribed, in which case an additional renewal fee must also be paid within that period.

[F98(3A)If a request for renewal is made or the renewal fee is paid in respect of only some of the goods or services for which the trade mark is registered, the registration is to be renewed for those goods or services only.]

(4)Renewal shall take effect from the expiry of the previous registration.

(5)If the registration is not renewed in accordance with the above provisions, the registrar shall remove the trade mark from the register.

Provision may be made by rules for the restoration of the registration of a trade mark which has been removed from the register, subject to such conditions (if any) as may be prescribed.

(6)The renewal or restoration of the registration of a trade mark shall be published in the prescribed manner.

Textual Amendments

F98S. 43(3A) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 21 (with Pt. 5)

Commencement Information

I11S. 43 wholly in force at 31.10.1994; s. 43 not in force at Royal Assent see s. 109; s.43(2)(3)(5)(6) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 43 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

44 Alteration of registered trade mark.U.K.

(1)A registered trade mark shall not be altered in the register, during the period of registration or on renewal.

(2)Nevertheless, the registrar may, at the request of the proprietor, allow the alteration of a registered trade mark where the mark includes the proprietor’s name or address and the alteration is limited to alteration of that name or address and does not substantially affect the identity of the mark.

(3)Provision shall be made by rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.

Commencement Information

I12S. 44 wholly in force at 31.10.1994; s. 44 not in force at Royal Assent see s. 109; s. 44(3) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s.44 not already in force by S.I. 1994/2550, art. 2, 3(1), Sch.

Surrender, revocation and invalidityU.K.

45 Surrender of registered trade mark.U.K.

(1)A registered trade mark may be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered.

(2)Provision may be made by rules—

(a)as to the manner and effect of a surrender, and

(b)for protecting the interests of other persons having a right in the registered trade mark.

Commencement Information

I13S. 45 wholly in force at31.10.1994; s. 45 not in force at Royal Assent see s. 109; s. 45(2) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 45 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

46 Revocation of registration.U.K.

(1)The registration of a trade mark may be revoked on any of the following grounds—

(a)that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

(b)that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;

(c)that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;

(d)that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

(2)For the purposes of subsection (1) use of a trade mark includes use in a form [F99(the “variant form”)] differing in elements which do not alter the distinctive character of the mark in the form in which it was registered [F100(regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)], and use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes.

(3)The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1)(a) or (b) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made:

Provided that, any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.

(4)An application for revocation may be made by any person, and may be made either to the registrar or to the court, except that—

(a)if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and

(b)if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court.

(5)Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.

(6)Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from—

(a)the date of the application for revocation, or

(b)if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date.

Textual Amendments

F99Words in s. 46(2) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 22(a) (with Pt. 5)

F100Words in s. 46(2) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 22(b) (with Pt. 5)

Modifications etc. (not altering text)

C16S. 46 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 13

S. 46 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 3(3)

47 Grounds for invalidity of registration.U.K.

(1)The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).

Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

(2)[F101Subject to subsections (2A) and (2G),] the registration of a trade mark may be declared invalid on the ground—

(a)that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or

(b)that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,

unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.

[F102(2ZA)The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 5(6).]

[F103(2A)F104... The registration of a trade mark may not be declared invalid on the ground that there is an earlier trade mark unless—

(a)the registration procedure for the earlier trade mark was completed within the period of five years ending with the date of the application for the declaration,

(b)the registration procedure for the earlier trade mark was not completed before that date, or

(c)the use conditions are met.

(2B)The use conditions are met if—

[F105(a)the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with their consent in relation to the goods or services for which it is registered—

(i)within the period of 5 years ending with the date of application for the declaration, and

(ii)within the period of 5 years ending with the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application where, at that date, the five year period within which the earlier trade mark should have been put to genuine use as provided in section 46(1)(a) has expired, or]

(b)it has not been so used, but there are proper reasons for non-use.

(2C)For these purposes—

(a)use of a trade mark includes use in a form [F106(the “variant form”)] differing in elements which do not alter the distinctive character of the mark in the form in which it was registered [F107(regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)], and

(b)use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes.

F108(2D). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

F109(2DA). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(2E)Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services.]

[F110(2F)Subsection (2A) does not apply where the earlier trade mark is a trade mark within section 6(1)(c).]

[F111(2G)An application for a declaration of invalidity on the basis of an earlier trade mark must be refused if it would have been refused, for any of the reasons set out in subsection (2H), had the application for the declaration been made on the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application.

(2H)The reasons referred to in subsection (2G) are—

(a)that on the date in question the earlier trade mark was liable to be declared invalid by virtue of section 3(1)(b), (c) or (d), (and had not yet acquired a distinctive character as mentioned in the words after paragraph (d) in section 3(1));

(b)that the application for a declaration of invalidity is based on section 5(2) and the earlier trade mark had not yet become sufficiently distinctive to support a finding of likelihood of confusion within the meaning of section 5(2);

(c)that the application for a declaration of invalidity is based on section 5(3)(a) and the earlier trade mark had not yet acquired a reputation within the meaning of section 5(3).]

(3)An application for a declaration of invalidity may be made by any person, and may be made either to the registrar or to the court, except that—

(a)if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and

(b)if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court.

(4)In the case of bad faith in the registration of a trade mark, the registrar himself may apply to the court for a declaration of the invalidity of the registration.

(5)Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.

[F112(5A)An application for a declaration of invalidity may be filed on the basis of one or more earlier trade marks or other earlier rights provided they all belong to the same proprietor.]

(6)Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made:

Provided that this shall not affect transactions past and closed.

Textual Amendments

F101Words in s. 47(2) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 23(2) (with Pt. 5)

F104Word in s. 47(2A) omitted (14.1.2019) by virtue of The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 23(4) (with Pt. 5)

F105S. 47(2B)(a) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 23(5) (with Pt. 5)

F106Words in s. 47(2C)(a) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 23(6)(a) (with Pt. 5)

F107Words in s. 47(2C)(a) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 23(6)(b) (with Pt. 5)

F111S. 47(2G)(2H) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 23(8) (with Pt. 5)

Modifications etc. (not altering text)

C18S. 47 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 13

S. 47 applied (with modifications) (14.8.1996) by S.I. 1908, reg. 3(3)

C20S. 47(3)-(6) applied (with modifications) (31.12.2020) by Regulation (EU) No. 1151/2012, Art. 14b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 18, Sch. 2 Pt. 3)

C21S. 47(3)-(6) applied (with modifications) (31.12.2020) by Regulation (EU) No. 251/2014, Art. 19b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 21, Sch. 4 Pt. 3)

C22S. 47(3)-(6) applied (with modifications) (31.12.2020) by Regulation (EU) No. 33/2019, Art. 32b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 26(31), Sch. 8 Pt. 3)

C23S. 47(3)-(6) applied (with modifications) (31.12.2020) by Regulation (EU) 2019/787, Art. 36b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2020 (S.I. 2020/1661), reg. 1(3), Sch. 5 Pt. 2)

C24S. 47(3)-(6) applied (with modifications) (31.12.2020) by Regulation (EU) No. 1308/2013, Art. 102b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 20, Sch. 3 Pt. 2)

48 Effect of acquiescence.U.K.

(1)Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the United Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right—

(a)to apply for a declaration that the registration of the later trade mark is invalid, or

(b)to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used,

unless the registration of the later trade mark was applied for in bad faith.

(2)Where subsection (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against his later trade mark.

Modifications etc. (not altering text)

C25S. 48 applied (1.4.1996) by S.I. 1996/714, art. 14

Collective marksU.K.

49 Collective marks.U.K.

[F113(1)A collective mark is a mark which is described as such when it is applied for and is capable of distinguishing the goods and services of members of the association which is the proprietor of the mark from those of other undertakings.

(1A)The following may be registered as the proprietor of a collective mark—

(a)an association of manufacturers, producers, suppliers of services or traders which has the capacity in its own name to enter into contracts and to sue or be sued; and

(b)a legal person governed by public law.]

(2)The provisions of this Act apply to collective marks subject to the provisions of Schedule 1.

Textual Amendments

F113S. 49(1)(1A) substituted for s. 49(1) (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 24 (with Pt. 5)

Certification marksU.K.

50 Certification marks.U.K.

(1)A certification mark is a mark [F114which is described as such when the mark is applied for and indicates] that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

(2)The provisions of this Act apply to certification marks subject to the provisions of Schedule 2.

Textual Amendments

F114Words in s. 50(1) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 25 (with Pt. 5)

Part IIU.K.[F115European Union] trade marks and international matters

Textual Amendments

F115Words in Pt. II heading substituted (6.4.2016) by The European Union Trade Mark Regulations 2016 (S.I. 2016/299), regs. 1(1), 3 (with reg. 13)

[F116European Union] trade marksU.K.

Textual Amendments

F116Words in s. 51 cross-heading substituted (6.4.2016) by The European Union Trade Mark Regulations 2016 (S.I. 2016/299), regs. 1(1), 3 (with reg. 13)

[F11751.Meaning of “European Union trade mark”U.K.

  • In this Act—

  • “European Union trade mark” has the meaning given by Article 1(1) of the European Union Trade Mark Regulation; and

  • “the European Union Trade Mark Regulation” means [F118Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark [F119(as it had effect immediately before IP completion day)].]]

Textual Amendments

F118Words in s. 51 substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 26 (with Pt. 5)

F12152 Power to make provision in connection with [F120European Union] Trade Mark Regulation.U.K.

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

F120Words in s. 52 heading substituted (6.4.2016) by The European Union Trade Mark Regulations 2016 (S.I. 2016/299), regs. 1(1), 5(2) (with regs. 13, 14)

[F12252ACertain trade marks registered as European Union trade marks to be treated as registered trade marksU.K.

Schedule 2A makes provision for European Union trade marks (including certain expired and removed marks) to be treated as registered trade marks with effect from IP completion day and about certain applications for a European Union trade mark made before IP completion day.]

Textual Amendments

The Madrid Protocol: international registrationU.K.

53 The Madrid Protocol.U.K.

In this Act—

  • “the Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27th June 1989;

  • “the International Bureau” has the meaning given by Article 2(1) of that Protocol; and

  • F123...

  • “international trade mark (UK)” means a trade mark which is entitled to protection in the United Kingdom under that Protocol.

Textual Amendments

54 Power to make provision giving effect to Madrid Protocol.U.K.

(1)The Secretary of State may by order make such provision as he thinks fit for giving effect in the United Kingdom to the provisions of the Madrid Protocol.

(2)Provision may, in particular, be made with respect to—

(a)the making of applications for international registrations by way of the Patent Office as office of origin;

(b)the procedures to be followed where the basic United Kingdom application or registration fails or ceases to be in force;

(c)the procedures to be followed where the Patent Office receives from the International Bureau a request for extension of protection to the United Kingdom;

(d)the effects of a successful request for extension of protection to the United Kingdom;

(e)the transformation of an application for an international registration, or an international registration, into a national application for registration;

(f)the communication of information to the International Bureau;

(g)the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals.

(3)Without prejudice to the generality of subsection (1), provision may be made by regulations under this section applying in relation to an international trade mark (UK) the provisions of—

[F124(a)sections 21 to 21F (unjustified threats);]

(b)sections 89 to 91 (importation of infringing goods, material or articles); and

(c)sections 92, 93, 95 and 96 (offences).

(4)An order under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

Textual Amendments

[F12554ACertain international trade marks protected in the European Union to be treated as registered trade marksU.K.

Schedule 2B makes provision for international trade marks protected in the European Union (including certain expired marks) to be treated as registered trade marks with effect from IP completion day and about certain applications for the protection of an international trade mark in the European Union and transformation applications made before IP completion day.]

Textual Amendments

The Paris Convention: supplementary provisionsU.K.

55 The Paris Convention.U.K.

(1)In this Act—

(a)“the Paris Convention” means the Paris Convention for the Protection of Industrial Property of March 20th 1883, as revised or amended from time to time, F126. . .

F127 [( aa ) “the WTO agreement” means the Agreement establishing the World Trade Organisation signed at Marrakesh on 15th April 1994 F128 , and ]

(b)a “Convention country” means a country, other than the United Kingdom, which is a party to that Convention [F129or to that Agreement].

(2)The Secretary of State may by order make such amendments of this Act, and rules made under this Act, as appear to him appropriate in consequence of any revision or amendment of the Paris Convention [F130or the WTO agreement] after the passing of this Act.

(3)Any such order shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

Textual Amendments

F126Word in s. 55(1) omitted (29.7.1999) by virtue of S.I. 1999/1899, reg. 13(2)

F127S. 55(1)(aa) inserted (29.7.1999) by S.I. 1999/1899, reg. 13(2)

F128Cm. 2556–59, 2561–2, 2564–69, 2571–74. The Agreement Establishing the World Trade Organisation was declared a Community Treaty as defined in section 1(2) of the European Communities Act 1972 by S.I. 1995/265.

F130Words in s. 55(2) inserted (29.7.1999) by S.I. 1999/1899, reg. 13(3)

56 Protection of well-known trade marks: Article 6bis.U.K.

(1)References in this Act to a trade mark which is entitled to protection under the Paris Convention [F131or the WTO agreement] as a well known trade mark are to a mark which is well-known in the United Kingdom as being the mark of a person who—

(a)is a national of a Convention country, or

(b)is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country,

whether or not that person carries on business, or has any goodwill, in the United Kingdom.

References to the proprietor of such a mark shall be construed accordingly.

(2)The proprietor of a trade mark which is entitled to protection under the Paris Convention [F131or the WTO agreement] as a well known trade mark is entitled to restrain by injunction the use in the United Kingdom of a trade mark which, or the essential part of which, is identical or similar to his mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.

This right is subject to section 48 (effect of acquiescence by proprietor of earlier trade mark).

(3)Nothing in subsection (2) affects the continuation of anybona fide use of a trade mark begun before the commencement of this section.

Textual Amendments

F131Words in s. 56(1)(2) inserted (29.7.1999) by S.I. 1999/1899, reg. 13(4) (with reg. 14(1))

57 National emblems, &c. of Convention countries: Article 6ter.U.K.

(1)A trade mark which consists of or contains the flag of a Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the registrar that use of the flag in the manner proposed is permitted without such authorisation.

(2)A trade mark which consists of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention [F132or the WTO agreement] shall not be registered without the authorisation of the competent authorities of that country.

(3)A trade mark which consists of or contains an official sign or hallmark adopted by a Convention country and indicating control and warranty shall not, where the sign or hallmark is protected under the Paris Convention [F132or the WTO agreement], be registered in relation to goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of the country concerned.

(4)The provisions of this section as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.

(5)Nothing in this section prevents the registration of a trade mark on the application of a national of a country who is authorised to make use of a state emblem, or official sign or hallmark, of that country, notwithstanding that it is similar to that of another country.

(6)Where by virtue of this section the authorisation of the competent authorities of a Convention country is or would be required for the registration of a trade mark, those authorities are entitled to restrain by injunction any use of the mark in the United Kingdom without their authorisation.

Textual Amendments

F132Words in s. 57(2)(3) inserted (29.7.1999) by S.I. 1999/1899, reg. 13(5)

58 Emblems, &c. of certain international organisations: Article 6ter.U.K.

(1)This section applies to—

(a)the armorial bearings, flags or other emblems, and

(b)the abbreviations and names,

of international intergovernmental organisations of which one or more Convention countries are members.

(2)A trade mark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris Convention [F133or the WTO agreement]shall not be registered without the authorisation of the international organisation concerned, unless it appears to the registrar that the use of the emblem, abbreviation or name in the manner proposed—

(a)is not such as to suggest to the public that a connection exists between the organisation and the trade mark, or

(b)is not likely to mislead the public as to the existence of a connection between the user and the organisation.

(3)The provisions of this section as to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem.

(4)Where by virtue of this section the authorisation of an international organisation is or would be required for the registration of a trade mark, that organisation is entitled to restrain by injunction any use of the mark in the United Kingdom without its authorisation.

(5)Nothing in this section affects the rights of a person whosebona fide use of the trade mark in question began before 4th January 1962 (when the relevant provisions of the Paris Convention entered into force in relation to the United Kingdom).

Textual Amendments

F133Words in s. 58(2) inserted (29.7.1999) by S.I. 1999/1899, reg. 13(6) (with art. 14(2))

59 Notification under Article 6ter of the Convention.U.K.

(1)For the purposes of section 57 state emblems of a Convention country (other than the national flag), and official signs or hallmarks, shall be regarded as protected under the Paris Convention only if, or to the extent that—

(a)the country in question has notified the United Kingdom in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, sign or hallmark,

(b)the notification remains in force, and

(c)the United Kingdom has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn.

(2)For the purposes of section 58 the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention only if, or to the extent that—

(a)the organisation in question has notified the United Kingdom in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, abbreviation or name,

(b)the notification remains in force, and

(c)the United Kingdom has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn.

(3)Notification under Article 6ter(3) of the Paris Convention shall have effect only in relation to applications for registration made more than two months after the receipt of the notification.

(4)The registrar shall keep and make available for public inspection by any person, at all reasonable hours and free of charge, a list of—

(a)the state emblems and official signs or hallmarks, and

(b)the emblems, abbreviations and names of international organisations,

which are for the time being protected under the Paris Convention by virtue of notification under Article 6ter(3).

F134[(5)Any reference in this section to Article 6ter of the Paris Convention shall be construed as including a reference to that Article as applied by the WTO agreement]

Textual Amendments

F134S. 59(5) inserted (29.7.1999) by S.I. 1999/1899, reg. 13(7)

F13560 Acts of agent or representative: Article 6septies.U.K.

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

MiscellaneousU.K.

F13661. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .U.K.

Textual Amendments

F136S. 61 repealed (28.7.2000 with effect as mentioned in Sch. 40 Pt. III Note 1 of the amending Act) by 2000 c. 17, s. 156, Sch. 40 Pt. III

[F137Nice ClassificationU.K.

Textual Amendments

F137S. 60A and cross-heading inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 29 (with Pt. 5)

60ASimilarity of goods and servicesU.K.

(1)For the purposes of this Act goods and services—

(a)are not to be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification;

(b)are not to be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.

(2)In subsection (1), the “Nice Classification” means the system of classification under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, which was last amended on 28 September 1979.]

Part IIIU.K. Administrative and other supplementary provisions

The registrarU.K.

Prospective

62 The registrar.U.K.

In this Act “the registrar” means the Comptroller-General of Patents, Designs and Trade Marks.

The registerU.K.

63 The register.U.K.

(1)The registrar shall maintain a register of trade marks.

References in this Act to “the register” are to that register; and references to registration (in particular, in the expression “registered trade mark”) are, unless the context otherwise requires, to registration in that register.

(2)There shall be entered in the register in accordance with this Act—

(a)registered trade marks,

(b)such particulars as may be prescribed of registrable transactions affecting a registered trade mark, and

(c)such other matters relating to registered trade marks as may be prescribed.

(3)The register shall be kept in such manner as may be prescribed, and provision shall in particular be made for—

(a)public inspection of the register, and

(b)the supply of certified or uncertified copies, or extracts, of entries in the register.

Commencement Information

I14S. 63 wholly in force at 31.10.1994; s. 63 not in force at Royal Assent see s. 109; s. 63(2)(3) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 63 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

64 Rectification or correction of the register.U.K.

(1)Any person having a sufficient interest may apply for the rectification of an error or omission in the register:

Provided that an application for rectification may not be made in respect of a matter affecting the validity of the registration of a trade mark.

(2)An application for rectification may be made either to the registrar or to the court, except that—

(a)if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and

(b)if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court.

(3)Except where the registrar or the court directs otherwise, the effect of rectification of the register is that the error or omission in question shall be deemed never to have been made.

(4)The registrar may, on request made in the prescribed manner by the proprietor of a registered trade mark, or a licensee, enter any change in his name or address as recorded in the register.

(5)The registrar may remove from the register matter appearing to him to have ceased to have effect.

Commencement Information

I15S. 64 wholly in force at 31.10.1994; s. 64 not in force at Royal Assent see s. 109; s. 64(4) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 64 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

65 Adaptation of entries to new classification.U.K.

(1)Provision may be made by rules empowering the registrar to do such things as he considers necessary to implement any amended or substituted classification of goods or services for the purposes of the registration of trade marks.

(2)Provision may in particular be made for the amendment of existing entries on the register so as to accord with the new classification.

(3)Any such power of amendment shall not be exercised so as to extend the rights conferred by the registration, except where it appears to the registrar that compliance with this requirement would involve undue complexity and that any extension would not be substantial and would not adversely affect the rights of any person.

(4)The rules may empower the registrar—

(a)to require the proprietor of a registered trade mark, within such time as may be prescribed, to file a proposal for amendment of the register, and

(b)to cancel or refuse to renew the registration of the trade mark in the event of his failing to do so.

(5)Any such proposal shall be advertised, and may be opposed, in such manner as may be prescribed.

Commencement Information

I16S. 65 wholly in force at 31.10.1994; s. 65 not in force at Royal Assent see s. 109; s. 65(1)(3)(4)(5) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 65 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

Powers and duties of the registrarU.K.

66 Power to require use of forms.U.K.

(1)The registrar may require the use of such forms as he may direct for any purpose relating to the registration of a trade mark or any other proceeding before him under this Act.

(2)The forms, and any directions of the registrar with respect to their use, shall be published in the prescribed manner.

Commencement Information

I17S. 66 wholly in force at 31.10.1994; s. 66 not in force at Royal Assent see s. 109; s. 66 in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3, Sch.

67 Information about applications and registered trade marks.U.K.

(1)After publication of an application for registration of a trade mark, the registrar shall on request provide a person with such information and permit him to inspect such documents relating to the application, or to any registered trade mark resulting from it, as may be specified in the request, subject, however, to any prescribed restrictions.

Any request must be made in the prescribed manner and be accompanied by the appropriate fee (if any).

(2)Before publication of an application for registration of a trade mark, documents or information constituting or relating to the application shall not be published by the registrar or communicated by him to any person except—

(a)in such cases and to such extent as may be prescribed, or

(b)with the consent of the applicant;

but subject as follows.

(3)Where a person has been notified that an application for registration of a trade mark has been made, and that the applicant will if the application is granted bring proceedings against him in respect of acts done after publication of the application, he may make a request under subsection (1) notwithstanding that the application has not been published and that subsection shall apply accordingly.

Commencement Information

I18S. 67(1)(2) wholly in force at 31.10.1994; s. 67 not in force at Royal Assent see s. 109; s. 67(1)(2) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 67 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

68 Costs and security for costs.U.K.

(1)Provision may be made by rules empowering the registrar, in any proceedings before him under this Act—

(a)to award any party such costs as he may consider reasonable, and

(b)to direct how and by what parties they are to be paid.

(2)Any such order of the registrar may be enforced—

(a)in England and Wales or Northern Ireland, in the same way as an order of the High Court;

(b)in Scotland, in the same way as a decree for expenses granted by the Court of Session.

(3)Provision may be made by rules empowering the registrar, in such cases as may be prescribed, to require a party to proceedings before him to give security for costs, in relation to those proceedings or to proceedings on appeal, and as to the consequences if security is not given.

Commencement Information

I19S. 68 wholly in force at 31.10.1994; s. 68 not in force at Royal Assent see s. 109; s. 68(1)(3) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 68 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

69 Evidence before registrar.U.K.

Provision may be made by rules—

(a)as to the giving of evidence in proceedings before the registrar under this Act by affidavit or statutory declaration;

(b)conferring on the registrar the powers of an official referee of the [F138Senior Courts or of the Court of Judicature] as regards the examination of witnesses on oath and the discovery and production of documents; and

(c)applying in relation to the attendance of witnesses in proceedings before the registrar the rules applicable to the attendance of witnesses before such a referee.

Textual Amendments

Commencement Information

I20S. 69 wholly in force at 31.10.1994; s. 69 not in force at Royal Assent see s. 109; s. 69 in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

70 Exclusion of liability in respect of official acts.U.K.

(1)The registrar shall not be taken to warrant the validity of the registration of a trade mark under this Act or under any treaty, convention, arrangement or engagement to which the United Kingdom is a party.

(2)The registrar is not subject to any liability by reason of, or in connection with, any examination required or authorised by this Act, or any such treaty, convention, arrangement or engagement, or any report or other proceedings consequent on such examination.

(3)No proceedings lie against an officer of the registrar in respect of any matter for which, by virtue of this section, the registrar is not liable.

Prospective

71 Registrar’s annual report.U.K.

(1)The Comptroller-General of Patents, Designs and Trade Marks shall in his annual report under section 121 of the M5Patents Act 1977, include a report on the execution of this Act, including the discharge of his functions under the Madrid Protocol.

(2)The report shall include an account of all money received and paid by him under or by virtue of this Act.

Marginal Citations

Legal proceedings and appealsU.K.

72 Registration to be prima facie evidence of validity.U.K.

In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register) the registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it.

Modifications etc. (not altering text)

C26S. 72 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 3(3)

C27S. 72 applied (31.12.2020) by Regulation (EU) No. 33/2019, Art. 32b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 26(31), Sch. 8 Pt. 3)

C28S. 72 applied (31.12.2020) by Regulation (EU) No. 251/2014, Art. 19b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 21, Sch. 4 Pt. 3)

C29S. 72 applied (31.12.2020) by Regulation (EU) No. 1151/2012, Art. 14b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 18, Sch. 2 Pt. 3)

C30S. 72 applied (31.12.2020) by Regulation (EU) No. 1308/2013, Art. 102b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 20, Sch. 3 Pt. 2)

C31S. 72 applied (31.12.2020) by Regulation (EU) 2019/787, Art. 36b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2020 (S.I. 2020/1661), reg. 1(3), Sch. 5 Pt. 2)

73 Certificate of validity of contested registration.U.K.

(1)If in proceedings before the court the validity of the registration of a trade mark is contested and it is found by the court that the trade mark is validly registered, the court may give a certificate to that effect.

(2)If the court gives such a certificate and in subsequent proceedings—

(a)the validity of the registration is again questioned, and

(b)the proprietor obtains a final order or judgment in his favour,

he is entitled to his costs as between solicitor and client unless the court directs otherwise.

This subsection does not extend to the costs of an appeal in any such proceedings.

Modifications etc. (not altering text)

C32S. 73 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 15(1)

C33S. 73 applied (31.12.2020) by Regulation (EU) No. 33/2019, Art. 32b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 26(31), Sch. 8 Pt. 3)

C34S. 73 applied (31.12.2020) by Regulation (EU) No. 251/2014, Art. 19b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 21, Sch. 4 Pt. 3)

C35S. 73 applied (31.12.2020) by Regulation (EU) No. 1151/2012, Art. 14b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 18, Sch. 2 Pt. 3)

C36S. 73 applied (31.12.2020) by Regulation (EU) No. 1308/2013, Art. 102b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 20, Sch. 3 Pt. 2)

C37S. 73 applied (31.12.2020) by Regulation (EU) 2019/787, Art. 36b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2020 (S.I. 2020/1661), reg. 1(3), Sch. 5 Pt. 2)

74 Registrar’s appearance in proceedings involving the register.U.K.

(1)In proceedings before the court involving an application for—

(a)the revocation of the registration of a trade mark,

(b)a declaration of the invalidity of the registration of a trade mark, or

(c)the rectification of the register,

the registrar is entitled to appear and be heard, and shall appear if so directed by the court.

(2)Unless otherwise directed by the court, the registrar may instead of appearing submit to the court a statement in writing signed by him, giving particulars of—

(a)any proceedings before him in relation to the matter in issue,

(b)the grounds of any decision given by him affecting it,

(c)the practice of the Patent Office in like cases, or

(d)such matters relevant to the issues and within his knowledge as registrar as he thinks fit;

and the statement shall be deemed to form part of the evidence in the proceedings.

(3)Anything which the registrar is or may be authorised or required to do under this section may be done on his behalf by a duly authorised officer.

Modifications etc. (not altering text)

C38S. 74 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 15(2)

S. 74 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 3(3)

C39S. 74 applied (with modifications) (31.12.2020) by Regulation (EU) No. 1308/2013, Art. 102b(1)(d)(2)(b) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 20, Sch. 3 Pt. 2)

C40S. 74 applied (with modifications) (31.12.2020) by Regulation (EU) 2019/787, Art. 36b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2020 (S.I. 2020/1661), reg. 1(3), Sch. 5 Pt. 2)

C41S. 74 applied (with modifications) (31.12.2020) by Regulation (EU) No. 1151/2012, Art. 14b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 18, Sch. 2 Pt. 3)

C42S. 74 applied (with modifications) (31.12.2020) by Regulation (EU) No. 33/2019, Art. 32b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 26(31), Sch. 8 Pt. 3)

C43S. 74 applied (with modifications) (31.12.2020) by Regulation (EU) No. 251/2014, Art. 19b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 21, Sch. 4 Pt. 3)

75 The court.U.K.

In this Act, unless the context otherwise requires, “the court” means—

(a)in England and Wales [F139, the High Court [F140, or the county court where it has] jurisdiction by virtue of an order made under section 1 of the Courts and Legal Services Act 1990,

(aa)in] Northern Ireland, the High Court, and

(b)in Scotland, the Court of Session.

Textual Amendments

F140Words in s. 75 substituted (22.4.2014) by Crime and Courts Act 2013 (c. 22), s. 61(3), Sch. 9 para. 134; S.I. 2014/954, art. 2(c) (with art. 3) (with transitional provisions and savings in S.I. 2014/956, arts. 3-11)

Modifications etc. (not altering text)

C44S. 75 applied (31.12.2020) by Regulation (EU) No. 33/2019, Art. 32b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 26(31), Sch. 8 Pt. 3)

C45S. 75 applied (31.12.2020) by Regulation (EU) No. 251/2014, Art. 19b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 21, Sch. 4 Pt. 3)

C46S. 75 applied (31.12.2020) by Regulation (EU) 2019/787, Art. 36b(1)(e) (as inserted by The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2020 (S.I. 2020/1661), reg. 1(3), Sch. 5 Pt. 2)

C47S. 75 applied (31.12.2020) by Regulation (EU) No. 1308/2013, Art. 102b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 20, Sch. 3 Pt. 2)

C48S. 75 applied (31.12.2020) by Regulation (EU) No. 1151/2012, Art. 14b(1) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 18, Sch. 2 Pt. 3)

76 Appeals from the registrar.U.K.

(1)An appeal lies from any decision of the registrar under this Act, except as otherwise expressly provided by rules.

For this purpose “decision” includes any act of the registrar in exercise of a discretion vested in him by or under this Act.

(2)Any such appeal may be brought either to an appointed person or to the court.

(3)Where an appeal is made to an appointed person, he may refer the appeal to the court if—

(a)it appears to him that a point of general legal importance is involved,

(b)the registrar requests that it be so referred, or

(c)such a request is made by any party to the proceedings before the registrar in which the decision appealed against was made.

Before doing so the appointed person shall give the appellant and any other party to the appeal an opportunity to make representations as to whether the appeal should be referred to the court.

(4)Where an appeal is made to an appointed person and he does not refer it to the court, he shall hear and determine the appeal and his decision shall be final.

(5)The provisions of sections 68 and 69 (costs and security for costs; evidence) apply in relation to proceedings before an appointed person as in relation to proceedings before the registrar.

[F141(6)In the application of this section to England and Wales, “the court” means the High Court.]

Textual Amendments

Modifications etc. (not altering text)

C49S. 76 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 3(3)

C50S. 76 applied (with modifications) (31.12.2020) by Regulation (EU) No. 251/2014, Art. 19b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 21, Sch. 4 Pt. 3)

C51S. 76 applied (with modifications) (31.12.2020) by Regulation (EU) No. 1308/2013, Art. 102b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 20, Sch. 3 Pt. 2)

C52S. 76 applied (with modifications) (31.12.2020) by Regulation (EU) 2019/787, Art. 36b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2020 (S.I. 2020/1661), reg. 1(3), Sch. 5 Pt. 2)

C53S. 76 applied (with modifications) (31.12.2020) by Regulation (EU) No. 33/2019, Art. 32b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 26(31), Sch. 8 Pt. 3)

C54S. 76 applied (with modifications) (31.12.2020) by Regulation (EU) No. 1151/2012, Art. 14b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 18, Sch. 2 Pt. 3)

Commencement Information

I21S. 76 wholly in force at 31.10.1994; s. 76 not in force at Royal Assent see s. 109; s. 76(1) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 76 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

77 Persons appointed to hear and determine appeals.U.K.

(1)For the purposes of section 76 an “appointed person” means a person appointed by the Lord Chancellor to hear and decide appeals under this Act.

(2)A person is not eligible for such appointment unless—

[F142(a)he satisfies the judicial-appointment eligibility condition on a 5-year basis;]

(b)he is an advocate or solicitor in Scotland of at least [F1435] years’ standing;

(c)he is a member of the Bar of Northern Ireland or [F144solicitor of the Court of Judicature of Northern Ireland] of at least [F1455] years’ standing; or

(d)he has held judicial office.

(3)An appointed person shall hold and vacate office in accordance with his terms of appointment, subject to the following provisions—

(a)there shall be paid to him such remuneration (whether by way of salary or fees), and such allowances, as the Secretary of State with the approval of the Treasury may determine;

(b)he may resign his office by notice in writing to the Lord Chancellor;

(c)the Lord Chancellor may by notice in writing remove him from office if—

(i)he has become bankrupt or [F146a debt relief order (under Part 7A of the Insolvency Act 1986) has been made in respect of him or he has] made an arrangement with his creditors or, in Scotland, his estate has been sequestrated or he has executed a trust deed for his creditors or entered into a composition contract, or

(ii)he is incapacitated by physical or mental illness,

or if he is in the opinion of the Lord Chancellor otherwise unable or unfit to perform his duties as an appointed person.

(4)The Lord Chancellor shall consult the Lord Advocate before exercising his powers under this section.

[F147(5)The Lord Chancellor may remove a person from office under subsection (3)(c) only with the concurrence of the appropriate senior judge.

(6)The appropriate senior judge is the Lord Chief Justice of England and Wales, unless—

(a)the person to be removed exercises functions wholly or mainly in Scotland, in which case it is the Lord President of the Court of Session, or

(b)the person to be removed exercises functions wholly or mainly in Northern Ireland, in which case it is the Lord Chief Justice of Northern Ireland.]

Textual Amendments

Modifications etc. (not altering text)

C55S. 77: Functions of the Lord Advocate transferred to the Secretary of State, and all property, rights and liabilities to which the Lord Advocate is entitled or subject in connection with any such function transferred to the Secretary of State for Scotland (19.5.1999) by S.I. 1999/678, arts. 2, 3, Sch. (with art. 7)

S. 77 modified (30.6.1999) by S.I. 1999/1748, art. 3, Sch. 1 para. 17

S. 77: transfer of certain functions (1.7.1999) by S.I. 1999/1750, arts. 1, 2, Sch. 1 (with art. 7); S.I. 1998/3178.art. 2(1)

C56S. 77(1) applied (with modifications) (31.12.2020) by Regulation (EU) No. 33/2019, Art. 32b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 26(31), Sch. 8 Pt. 3)

C57S. 77(1) applied (with modifications) (31.12.2020) by Regulation (EU) No. 1151/2012, Art. 14b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 18, Sch. 2 Pt. 3)

C58S. 77(1) applied (with modifications) (31.12.2020) by Regulation (EU) No. 251/2014, Art. 19b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 21, Sch. 4 Pt. 3)

C59S. 77(1) applied (with modifications) (31.12.2020) by Regulation (EU) No. 1308/2013, Art. 102b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1637), regs. 1(7), 20, Sch. 3 Pt. 2)

C60S. 77(1) applied (with modifications) (31.12.2020) by Regulation (EU) 2019/787, Art. 36b(1)(2) (as inserted by The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2020 (S.I. 2020/1661), reg. 1(3), Sch. 5 Pt. 2)

Rules, fees, hours of business, &c.U.K.

78 Power of Secretary of State to make rules.U.K.

(1)The Secretary of State may make rules—

(a)for the purposes of any provision of this Act authorising the making of rules with respect to any matter, and

(b)for prescribing anything authorised or required by any provision of this Act to be prescribed,

and generally for regulating practice and procedure under this Act.

(2)Provision may, in particular, be made—

(a)as to the manner of filing of applications and other documents;

(b)requiring and regulating the translation of documents and the filing and authentication of any translation;

(c)as to the service of documents;

(d)authorising the rectification of irregularities of procedure;

(e)prescribing time limits for anything required to be done in connection with any proceeding under this Act;

(f)providing for the extension of any time limit so prescribed, or specified by the registrar, whether or not it has already expired.

(3)Rules under this Act shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

Commencement Information

I22S. 78 wholly in force at 31.10.1994; s. 78 not in force at Royal Assent see s. 109; s. 78 in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

79 Fees.U.K.

(1)There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed.

(2)Provision may be made by rules as to—

(a)the payment of a single fee in respect of two or more matters, and

(b)the circumstances (if any) in which a fee may be repaid or remitted.

Commencement Information

I23S. 79 wholly in force at 31.10.1994; s. 79 not in force at Royal Assent see s. 109; s. 79 in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

80 Hours of business and business days.U.K.

(1)The registrar may give directions specifying the hours of business of the Patent Office for the purpose of the transaction by the public of business under this Act, and the days which are business days for that purpose.

(2)Business done on any day after the specified hours of business, or on a day which is not a business day, shall be deemed to have been done on the next business day; and where the time for doing anything under this Act expires on a day which is not a business day, that time shall be extended to the next business day.

(3)Directions under this section may make different provision for different classes of business and shall be published in the prescribed manner.

Commencement Information

I24S. 80 wholly in force at 31.10.1994; s. 80 not in force at Royal Assent see s. 109; s. 80(1)(3) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 80 not already in force by S.I. 1994/2550, arts. 2, 3, Sch.

81 The trade marks journal.U.K.

Provision shall be made by rules for the publication by the registrar of a journal containing particulars of any application for the registration of a trade mark (including a representation of the mark) and such other information relating to trade marks as the registrar thinks fit.

Commencement Information

I25S. 81 wholly in force at 31.10.1994; s. 81 not in force at Royal Assent see s. 109; s. 81 in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

Trade mark agentsU.K.

82 Recognition of agents.U.K.

Except as otherwise provided by rules [F148and subject to the Legal Services Act 2007], any act required or authorised by this Act to be done by or to a person in connection with the registration of a trade mark, or any procedure relating to a registered trade mark, may be done by or to an agent authorised by that person orally or in writing.

Textual Amendments

Commencement Information

I26S. 82 wholly in force at 31.10.1994; s. 82 not in force at Royal Assent see s. 109; s. 82 in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

[F14983 The register of trade mark attorneysU.K.

(1)There is to continue to be a register of persons who act as agent for others for the purpose of applying for or obtaining the registration of trade marks.

(2)In this Act a registered trade mark attorney means an individual whose name is entered on the register kept under this section.

(3)The register is to be kept by the Institute of Trade Mark Attorneys.

(4)The Secretary of State may, by order, amend subsection (3) so as to require the register to be kept by the person specified in the order.

(5)Before making an order under subsection (4), the Secretary of State must consult the Legal Services Board.

(6)An order under this section must be made by statutory instrument.

(7)An order under this section may not be made unless a draft of it has been laid before, and approved by a resolution of, each House of Parliament.

Textual Amendments

F149Ss. 83, 83A substituted for s. 83 (1.1.2010) by Legal Services Act 2007 (c. 29), ss. 184(3), 211(2) (with ss. 29, 192, 193) (as amended (15.12.2009) by S.I. 2009/3339, arts. 1, 2); S.I. 2009/3250, art. 2(f)(i)

83ARegulation of trade mark attorneysU.K.

(1)The person who keeps the register under section 83 may make regulations which regulate—

(a)the keeping of the register and the registration of persons;

(b)the carrying on of trade mark agency work by registered persons.

(2)Those regulations may, amongst other things, make—

(a)provision as to the educational and training qualifications, and other requirements, which must be satisfied before an individual may be registered or for an individual to remain registered;

(b)provision as to the requirements which must be met by a body (corporate or unincorporate) before it may be registered or for it to remain registered, including provision as to the management and control of the body;

(c)provision as to the educational, training or other requirements to be met by regulated persons;

(d)provision regulating the practice, conduct and discipline of registered persons or regulated persons;

(e)provision authorising in such cases as may be specified in the regulations the erasure from the register of the name of any person registered in it, or the suspension of a person's registration;

(f)provision requiring the payment of such fees as may be specified in or determined in accordance with the regulations;

(g)provision about the provision to be made by registered persons in respect of complaints made against them;

(h)provision about the keeping of records and accounts by registered persons or regulated persons;

(i)provision for reviews of or appeals against decisions made under the regulations;

(j)provision as to the indemnification of registered persons or regulated persons against losses arising from claims in respect of civil liability incurred by them.

(3)Regulations under this section may make different provision for different purposes.

(4)Regulations under this section which are not regulatory arrangements within the meaning of the Legal Services Act 2007 are to be treated as such arrangements for the purposes of that Act.

(5)Before the appointed day, regulations under this section may be made only with the approval of the Secretary of State.

(6)The powers conferred to make regulations under this section are not to be taken to prejudice—

(a)any other power which the person who keeps the register may have to make rules or regulations (however they may be described and whether they are made under an enactment or otherwise);

(b)any rules or regulations made by that person under any such power.

(7)In this section—

  • “appointed day” means the day appointed for the coming into force of paragraph 1 of Schedule 4 to the Legal Services Act 2007;

  • “manager”, in relation to a body, has the same meaning as in the Legal Services Act 2007 (see section 207);

  • “registered person” means—

    (a)

    a registered trade mark attorney, or

    (b)

    a body (corporate or unincorporate) registered in the register kept under section 83;

  • “regulated person” means a person who is not a registered person but is a manager or employee of a body which is a registered person;

  • “trade mark agency work” means work done in the course of carrying on the business of acting as agent for others for the purpose of—

    (a)

    applying for or obtaining the registration of trade marks in the United Kingdom or elsewhere , or

    (b)

    conducting proceedings before the Comptroller relating to applications for or otherwise in connection with the registration of trade marks.]

Textual Amendments

F149Ss. 83, 83A substituted for s. 83 (1.1.2010) by Legal Services Act 2007 (c. 29), ss. 184(3), 211(2) (with ss. 29, 192, 193) (as amended (15.12.2009) by S.I. 2009/3339, arts. 1, 2); S.I. 2009/3250, art. 2(f)(i)

84 Unregistered persons not to be described as registered trade mark agents.U.K.

(1)An individual who is not a registered trade mark [F150attorney] shall not—

(a)carry on a business (otherwise than in partnership) under any name or other description which contains the words “registered trade mark agent” [F151 or registered trade mark attorney]; or

(b)in the course of a business otherwise describe or hold himself out, or permit himself to be described or held out, as a registered trade mark agent [F152or a registered trade mark attorney].

(2)A partnership [F153or other unincorporated body] shall not—

(a)carry on a business under any name or other description which contains the words “registered trade mark agent” [F154or registered trade mark attorney]; or

(b)in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a firm of registered trade mark agents [F155or registered trade mark attorneys],

unless [F156the partnership or other body is registered in the register kept under section 83.]

(3)A body corporate shall not—

(a)carry on a business (otherwise than in partnership) under any name or other description which contains the words “registered trade mark agent” [F157or registered trade mark attorney]; or

(b)in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a registered trade mark agent [F158or a registered trade mark attorney],

unless [F159the body corporate is registered in the register kept under section 83.]

(4)A person who contravenes this section commits an offence and is liable on summary conviction to a fine not exceeding level 5 on the standard scale; and proceedings for such an offence may be begun at any time within a year from the date of the offence.

Textual Amendments

F16085 Power to prescribe conditions, &c. for mixed partnerships and bodies corporate.U.K.

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

86 Use of the term “trade mark attorney”.U.K.

(1)No offence is committed under the enactments restricting the use of certain expressions in reference to persons not qualified to act as solicitors by the use of the term “trade mark attorney” in reference to a registered trade mark [F161attorney].

(2)The enactments referred to in subsection (1) are section 21 of the M6Solicitors Act 1974, section 31 of the M7Solicitors (Scotland) Act 1980 and Article 22 of the Solicitors (Northern Ireland) Order 1976.

Textual Amendments

Marginal Citations

87 Privilege for communications with registered trade mark agents.U.K.

(1)This section applies to[F162—

(a)]communications as to any matter relating to the protection of any design or trade mark, or as to any matter involving passing off[F163, and

(b)documents, material or information relating to any matter mentioned in paragraph (a).]

[F164(2)Where a trade mark attorney acts for a client in relation to a matter mentioned in subsection (1), any communication, document, material or information to which this section applies is privileged from disclosure in like manner as if the trade mark attorney had at all material times been acting as the client's solicitor.]

(3)In subsection (2) “trade mark [F165attorney]” means—

(a)a registered trade mark [F165attorney], or

(b)a partnership entitled to describe itself as a firm of registered trade mark [F166attorneys], or

(c)[F167any other unincorporated body or ]a body corporate entitled to describe itself as a registered trade mark [F165attorney] [F168or]

[F169(d)a person whose name appears on the list of professional representatives for trade mark matters maintained by the European Union Intellectual Property Office referred to in Article 120 of the European Union Trade Mark Regulation.]

[F170(4)Where a trade mark attorney is a person falling within subsection (3)(d), subsection (2) applies as if the reference to a matter mentioned in subsection (1) were a reference to a matter relating to the protection of a trade mark.]

Textual Amendments

F162Words in s. 87(1) renumbered as s. 87(1)(a) (1.1.2010) by Legal Services Act 2007 (c. 29), s. 211(2), Sch. 21 para. 113(a) (with ss. 29, 192, 193); S.I. 2009/3250, art. 2(h)

F167Words in s. 87(3)(c) inserted (1.1.2010) by Legal Services Act 2007 (c. 29), ss. 184(6), 211(2) (with ss. 29, 192, 193); S.I. 2009/3250, art. 2(f)(i)

Modifications etc. (not altering text)

C61S. 87 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 5

88 Power of registrar to refuse to deal with certain agents.U.K.

(1)The Secretary of State may make rules authorising the registrar to refuse to recognise as agent in respect of any business under this Act—

(a)a person who has been convicted of an offence under section 84 (unregistered persons describing themselves as registered trade mark agents);

(b)an individual whose name has been erased from and not restored to, or who is suspended from, the register of trade mark [F171attorneys] on the ground of misconduct;

(c)a person who is found by the Secretary of State to have been guilty of such conduct as would, in the case of an individual registered in the register of trade mark [F172attorneys], render him liable to have his name erased from the register on the ground of misconduct;

(d)a partnership or body corporate of which one of the partners or directors is a person whom the registrar could refuse to recognise under paragraph (a), (b) or (c) above.

(2)The rules may contain such incidental and supplementary provisions as appear to the Secretary of State to be appropriate and may, in particular, prescribe circumstances in which a person is or is not to be taken to have been guilty of misconduct.

Textual Amendments

Commencement Information

I27S. 88 wholly in force at 31.10.1994; s. 88 not in force at Royal Assent see s. 109; s. 88 in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

Importation of infringing goods, material or articlesU.K.

89 Infringing goods, material or articles may be treated as prohibited goods.U.K.

(1)The proprietor of a registered trade mark, or a licensee, may give notice in writing to the Commissioners of Customs and Excise—

(a)that he is the proprietor or, as the case may be, a licensee of the registered trade mark,

(b)that, at a time and place specified in the notice, goods which are, in relation to that registered trade mark, infringing goods, material or articles are expected to arrive in the United Kingdom—

(i)from outside the European Economic Area, or

(ii)from within that Area but not having been entered for free circulation, and

(c)that he requests the Commissioners to treat them as prohibited goods.

(2)When a notice is in force under this section the importation of the goods to which the notice relates, otherwise than by a person for his private and domestic use, is prohibited; but a person is not by reason of the prohibition liable to any penalty other than forfeiture of the goods.

[F173(3)This section does not apply to goods placed in, or expected to be placed in, one of the situations referred to in Article 1(1), in respect of which an application may be made under [F174Article 3 of the European Customs Enforcement Regulation].]

Textual Amendments

Modifications etc. (not altering text)

C62S. 89 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 16

S. 89 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 6

90 Power of Commissioners of Customs and Excise to make regulations.U.K.

(1)The Commissioners of Customs and Excise may make regulations prescribing the form in which notice is to be given under section 89 and requiring a person giving notice—

(a)to furnish the Commissioners with such evidence as may be specified in the regulations, either on giving notice or when the goods are imported, or at both those times, and

(b)to comply with such other conditions as may be specified in the regulations.

(2)The regulations may, in particular, require a person giving such a notice—

(a)to pay such fees in respect of the notice as may be specified by the regulations;

(b)to give such security as may be so specified in respect of any liability or expense which the Commissioners may incur in consequence of the notice by reason of the detention of any goods or anything done to goods detained;

(c)to indemnify the Commissioners against any such liability or expense, whether security has been given or not.

(3)The regulations may make different provision as respects different classes of case to which they apply and may include such incidental and supplementary provisions as the Commissioners consider expedient.

(4)Regulations under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

F175(5). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

Modifications etc. (not altering text)

C64S. 90 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 16

S. 90 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 6

C66S. 90 applied by 1995 c. 32, s. 12B(1) (as inserted (with effect in accordance with s. 40(7) of the amending Act) by London Olympic Games and Paralympic Games Act 2006 (c. 12), s. 40(2), Sch. 3 para. 14 (with s. 40(5)); S.I. 2007/1064, art. 2(c))

91[F176 Power of Commissioners for Revenue and Customs to disclose information.]U.K.

Where information relating to infringing goods, material or articles has been obtained [F177or is held] by [F178the Commissioners for her Majesty’s Revenue and Customs] for the purposes of, or in connection with, the exercise of [F179 functions of Her Majesty’s Revenue and Customs] in relation to imported goods, the Commissioners may authorise the disclosure of that information for the purpose of facilitating the exercise by any person of any function in connection with the investigation or prosecution of [F180an offence under—

(a)section 92 below (unauthorised use of trade mark, &c in relation to goods),

(b)the Trade Descriptions Act 1968,

(c)the Business Protection from Misleading Marketing Regulations 2008, or

(d)the Consumer Protection from Unfair Trading Regulations 2008.]

Textual Amendments

Modifications etc. (not altering text)

C67S. 91 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 16

S. 91 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 6

OffencesU.K.

92 Unauthorised use of trade mark, &c. in relation to goods.U.K.

(1)A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor—

(a)applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trade mark, or

(b)sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears, such a sign, or

(c)has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b).

(2)A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor—

(a)applies a sign identical to, or likely to be mistaken for, a registered trade mark to material intended to be used—

(i)for labelling or packaging goods,

(ii)as a business paper in relation to goods, or

(iii)for advertising goods, or

(b)uses in the course of a business material bearing such a sign for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods, or

(c)has in his possession, custody or control in the course of a business any such material with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b).

(3)A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor—

(a)makes an article specifically designed or adapted for making copies of a sign identical to, or likely to be mistaken for, a registered trade mark, or

(b)has such an article in his possession, custody or control in the course of a business,

knowing or having reason to believe that it has been, or is to be, used to produce goods, or material for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods.

(4)A person does not commit an offence under this section unless—

(a)the goods are goods in respect of which the trade mark is registered, or

(b)the trade mark has a reputation in the United Kingdom and the use of the sign takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the trade mark.

(5)It is a defence for a person charged with an offence under this section to show that he believed on reasonable grounds that the use of the sign in the manner in which it was used, or was to be used, was not an infringement of the registered trade mark.

(6)A person guilty of an offence under this section is liable—

(a)on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both;

(b)on conviction on indictment to a fine or imprisonment for a term not exceeding ten years, or both.

Modifications etc. (not altering text)

C69S. 92 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 17

S. 92 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 7

C70S. 92 applied (with modifications) (29.4.2006) by Community Trade Mark Regulations 2006 (S.I. 2006/1027), regs. 1(1), 8

[F18192A Search warrantsU.K.

(1)Where a justice of the peace (in Scotland, a sheriff or justice of the peace) is satisfied by information on oath given by a constable (in Scotland, by evidence on oath) that there are reasonable grounds for believing—

(a)that an offence under section 92 (unauthorised use of trade mark, etc. in relation to goods) has been or is about to be committed in any premises, and

(b)that evidence that such an offence has been or is about to be committed is in those premises,

he may issue a warrant authorising a constable to enter and search the premises, using such reasonable force as is necessary.

(2)The power conferred by subsection (1) does not, in England and Wales, extend to authorising a search for material of the kinds mentioned in section 9(2) of the Police and Criminal Evidence Act 1984 (c. 60) (certain classes of personal or confidential material).

(3)A warrant under subsection (1)—

(a)may authorise persons to accompany any constable executing the warrant, and

(b)remains in force for [F18228 days] [F182three months] from the date of its issue.

(4)In executing a warrant issued under subsection (1) a constable may seize an article if he reasonably believes that it is evidence that any offence under section 92 has been or is about to be committed.

(5) In this section “ premises ” includes land, buildings, fixed or moveable structures, vehicles, vessels, aircraft and hovercraft. ]

Textual Amendments

F181S. 92A inserted (20.11.2002) by 2002 c. 24, s. 6; S.I. 2002/2749, art. 2

Modifications etc. (not altering text)

C71S. 92A applied (with modifications) (29.4.2006) by Community Trade Mark Regulations 2006 (S.I. 2006/1027), regs. 1(1), 8

93 Enforcement function of local weights and measures authority.U.K.

(1)It is the duty of every local weights and measures authority to enforce within their area the provisions of section 92 (unauthorised use of trade mark, &c. in relation to goods).

F183(2). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(3)Subsection (1) above does not apply in relation to the enforcement of section 92 in Northern Ireland, but it is the duty of the Department of Economic Development to enforce that section in Northern Ireland.

F184...

[F185(3A)For the investigatory powers available to a local weights and measures authority or the Department of Enterprise, Trade and Investment in Northern Ireland for the purposes of the duties in this section, see Schedule 5 to the Consumer Rights Act 2015.]

(4)Any enactment which authorises the disclosure of information for the purpose of facilitating the enforcement of the Trade Descriptions Act 1968 shall apply as if section 92 above were contained in that Act and as if the functions of any person in relation to the enforcement of that section were functions under that Act.

(5)Nothing in this section shall be construed as authorising a local weights and measures authority to bring proceedings in Scotland for an offence.

Textual Amendments

Modifications etc. (not altering text)

C72S. 93 applied (with modifications) (1.4.1996) by S.I. 1996/704, art. 17

S. 93 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 7

C73S. 93 applied (with modifications) (29.4.2006) by Community Trade Mark Regulations 2006 (S.I. 2006/1027), regs. 1(1), 8

94 Falsification of register, &c.U.K.

(1)It is an offence for a person to make, or cause to be made, a false entry in the register of trade marks, knowing or having reason to believe that it is false.

(2)It is an offence for a person—

(a)to make or cause to be made anything falsely purporting to be a copy of an entry in the register, or

(b)to produce or tender or cause to be produced or tendered in evidence any such thing,

knowing or having reason to believe that it is false.

(3)A person guilty of an offence under this section is liable—

(a)on conviction on indictment, to imprisonment for a term not exceeding two years or a fine, or both;

(b)on summary conviction, to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both.

95 Falsely representing trade mark as registered.U.K.

(1)It is an offence for a person—

(a)falsely to represent that a mark is a registered trade mark, or

(b)to make a false representation as to the goods or services for which a trade mark is registered

knowing or having reason to believe that the representation is false.

(2)For the purposes of this section, the use in the United Kingdom in relation to a trade mark—

(a)of the word “registered”, or

(b)of any other word or symbol importing a reference (express or implied) to registration,

shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in the United Kingdom and that the trade mark is in fact so registered for the goods or services in question.

(3)A person guilty of an offence under this section is liable on summary conviction to a fine not exceeding level 3 on the standard scale.

96 Supplementary provisions as to summary proceedings in Scotland.U.K.

(1)Notwithstanding anything in [F186section 136 of the Criminal Procedure (Scotland) Act 1995], summary proceedings in Scotland for an offence under this Act may be begun at any time within six months after the date on which evidence sufficient in the Lord Advocate’s opinion to justify the proceedings came to his knowledge.

For this purpose a certificate of the Lord Advocate as to the date on which such evidence came to his knowledge is conclusive evidence.

(2)For the purposes of subsection (1) and of any other provision of this Act as to the time within which summary proceedings for an offence may be brought, proceedings in Scotland shall be deemed to be begun on the date on which a warrant to apprehend or to cite the accused is granted, if such warrant is executed without undue delay.

Textual Amendments

F186Words in s. 96(1) substituted (1.4.1996) by 1995 c. 40, ss. 5, 7(2), Sch. 4 para. 92(1)(2)

Forfeiture of counterfeit goods, &c.U.K.

97 Forfeiture: England and Wales or Northern Ireland.U.K.

(1)In England and Wales or Northern Ireland where there has come into the possession of any person in connection with the investigation or prosecution of a relevant offence—

(a)goods which, or the packaging of which, bears a sign identical to or likely to be mistaken for a registered trade mark,

(b)material bearing such a sign and intended to be used for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods, or

(c)articles specifically designed or adapted for making copies of such a sign,

that person may apply under this section for an order for the forfeiture of the goods, material or articles.

(2)An application under this section may be made—

(a)where proceedings have been brought in any court for a relevant offence relating to some or all of the goods, material or articles, to that court;

(b)where no application for the forfeiture of the goods, material or articles has been made under paragraph (a), by way of complaint to a magistrates’ court.

(3)On an application under this section the court shall make an order for the forfeiture of any goods, material or articles only if it is satisfied that a relevant offence has been committed in relation to the goods, material or articles.

(4)A court may infer for the purposes of this section that such an offence has been committed in relation to any goods, material or articles if it is satisfied that such an offence has been committed in relation to goods, material or articles which are representative of them (whether by reason of being of the same design or part of the same consignment or batch or otherwise).

(5)Any person aggrieved by an order made under this section by a magistrates’ court, or by a decision of such a court not to make such an order, may appeal against that order or decision—

(a)in England and Wales, to the Crown Court;

(b)in Northern Ireland, to the county court;

and an order so made may contain such provision as appears to the court to be appropriate for delaying the coming into force of the order pending the making and determination of any appeal (including any application under section 111 of the M8Magistrates’ Courts Act 1980 or Article 146 of the M9Magistrates’ Courts (Northern Ireland) Order 1981 (statement of case)).

(6)Subject to subsection (7), where any goods, material or articles are forfeited under this section they shall be destroyed in accordance with such directions as the court may give.

(7)On making an order under this section the court may, if it considers it appropriate to do so, direct that the goods, material or articles to which the order relates shall (instead of being destroyed) be released, to such person as the court may specify, on condition that that person—

(a)causes the offending sign to be erased, removed or obliterated, and

(b)complies with any order to pay costs which has been made against him in the proceedings for the order for forfeiture.

(8)For the purposes of this section a “relevant offence” means

[F187(a)an offence under section 92 above (unauthorised use of trade mark, &c in relation to goods),

(b)an offence under the Trade Descriptions Act 1968,

(c)an offence under the Business Protection from Misleading Marketing Regulations 2008,

(d)an offence under the Consumer Protection from Unfair Trading Regulations 2008, or

(e)any offence involving dishonesty or deception.]

Textual Amendments

Modifications etc. (not altering text)

C74S. 97 applied (with modifications) (20.9.1995) by 1995 c. 32, s. 11; S.I. 1995/2472, art. 2

S. 97 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 17

S. 97 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 7

C75S. 97 applied (with modifications) (29.4.2006) by Community Trade Mark Regulations 2006 (S.I. 2006/1027), regs. 1(1), 8

Marginal Citations

98 Forfeiture: Scotland.U.K.

(1)In Scotland the court may make an order for the forfeiture of any—

(a)goods which bear, or the packaging of which bears, a sign identical to or likely to be mistaken for a registered trade mark,

(b)material bearing such a sign and intended to be used for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods, or

(c)articles specifically designed or adapted for making copies of such a sign.

(2)An order under this section may be made—

(a)on an application by the procurator-fiscal made in the manner specified in [F188section 134 of the Criminal Procedure (Scotland) Act 1995], or

(b)where a person is convicted of a relevant offence, in addition to any other penalty which the court may impose.

(3)On an application under subsection (2)(a), the court shall make an order for the forfeiture of any goods, material or articles only if it is satisfied that a relevant offence has been committed in relation to the goods, material or articles.

(4)The court may infer for the purposes of this section that such an offence has been committed in relation to any goods, material or articles if it is satisfied that such an offence has been committed in relation to goods, material or articles which are representative of them (whether by reason of being of the same design or part of the same consignment or batch or otherwise).

(5)The procurator-fiscal making the application under subsection (2)(a) shall serve on any person appearing to him to be the owner of, or otherwise to have an interest in, the goods, material or articles to which the application relates a copy of the application, together with a notice giving him the opportunity to appear at the hearing of the application to show cause why the goods, material or articles should not be forfeited.

(6)Service under subsection (5) shall be carried out, and such service may be proved, in the manner specified for citation of an accused in summary proceedings under the [F189Criminal Procedure (Scotland) Act 1995].

(7)Any person upon whom notice is served under subsection (5) and any other person claiming to be the owner of, or otherwise to have an interest in, goods, material or articles to which an application under this section relates shall be entitled to appear at the hearing of the application to show cause why the goods, material or articles should not be forfeited.

(8)The court shall not make an order following an application under subsection (2)(a)—

(a)if any person on whom notice is served under subsection (5) does not appear, unless service of the notice on that person is proved; or

(b)if no notice under subsection (5) has been served, unless the court is satisfied that in the circumstances it was reasonable not to serve such notice.

(9)Where an order for the forfeiture of any goods, material or articles is made following an application under subsection (2)(a), any person who appeared, or was entitled to appear, to show cause why goods, material or articles should not be forfeited may, within 21 days of the making of the order, appeal to the High Court by Bill of Suspension; and [F190section 182(5)(a) to (e) of the Criminal Procedure (Scotland) Act 1995] shall apply to an appeal under this subsection as it applies to a stated case under Part II of that Act.

(10)An order following an application under subsection (2)(a) shall not take effect—

(a)until the end of the period of 21 days beginning with the day after the day on which the order is made; or

(b)if an appeal is made under subsection (9) above within that period, until the appeal is determined or abandoned.

(11)An order under subsection (2)(b) shall not take effect—

(a)until the end of the period within which an appeal against the order could be brought under the [F191Criminal Procedure (Scotland) Act 1995]; or

(b)if an appeal is made within that period, until the appeal is determined or abandoned.

(12)Subject to subsection (13), goods, material or articles forfeited under this section shall be destroyed in accordance with such directions as the court may give.

(13)On making an order under this section the court may if it considers it appropriate to do so, direct that the goods, material or articles to which the order relates shall (instead of being destroyed) be released, to such person as the court may specify, on condition that that person causes the offending sign to be erased, removed or obliterated.

(14)For the purposes of this section—

  • “relevant offence” means

    (a)

    [F192an offence under section 92 above (unauthorised use of trade mark, &c in relation to goods),

    (b)

    an offence under the Trade Descriptions Act 1968,

    (c)

    an offence under the Business Protection from Misleading Marketing Regulations 2008,

    (d)

    an offence under the Consumer Protection from Unfair Trading Regulations 2008, or

    (e)

    any offence involving dishonesty or deception;]

  • “the court” means—

    (a)

    in relation to an order made on an application under subsection (2)(a), the sheriff, and

    (b)

    in relation to an order made under subsection (2)(b), the court which imposed the penalty.

Textual Amendments

F188Words in s. 98(2)(a) substituted (1.4.1996) by 1995 c. 40, s. 5, Sch. 4 para. 92(1)(3)(a)

F189Words in s. 98(6) substituted (1.4.1996) by 1995 c. 40, s. 5, Sch. 4 para. 92(1)(3)(b)

F190Words in s. 98(9) substituted (1.4.1996) by 1995 c. 40, s. 5, Sch. 4 para. 92(1)(3)(c)

F191Words in s. 98(11) substituted (1.4.1996) by 1995 c. 40, s. 5, Sch. 4 para. 92(1)(3)(d)

Modifications etc. (not altering text)

C76S. 98 applied (with modifications) (20.9.1995) by 1995 c. 32, s. 12; S.I. 1995/2472, art. 2

S. 98 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 17

S. 98 applied (with modifications) (14.8.1996) by S.I. 1996/1908, reg. 7

Part IVU.K. Miscellaneous and general provisions

MiscellaneousU.K.

99 Unauthorised use of Royal arms, &c.U.K.

(1)A person shall not without the authority of Her Majesty use in connection with any business the Royal arms (or arms so closely resembling the Royal arms as to be calculated to deceive) in such manner as to be calculated to lead to the belief that he is duly authorised to use the Royal arms.

(2)A person shall not without the authority of Her Majesty or of a member of the Royal family use in connection with any business any device, emblem or title in such a manner as to be calculated to lead to the belief that he is employed by, or supplies goods or services to, Her Majesty or that member of the Royal family.

(3)A person who contravenes subsection (1) commits an offence and is liable on summary conviction to a fine not exceeding level 2 on the standard scale.

(4)Contravention of subsection (1) or (2) may be restrained by injunction in proceedings brought by—

(a)any person who is authorised to use the arms, device, emblem or title in question, or

(b)any person authorised by the Lord Chamberlain to take such proceedings.

(5)Nothing in this section affects any right of the proprietor of a trade mark containing any such arms, device, emblem or title to use that trade mark.

[F19399AReproduction of trade marks in dictionaries, encyclopaedias etc.U.K.

(1)Subsection (2) applies if the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference work, in print or electronic form, gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered.

(2)The publisher of the work must, at the request in writing of the proprietor of the trade mark, ensure that the reproduction of the trade mark is accompanied by an indication that it is a registered trade mark.

(3)The action required by subsection (2) must be taken—

(a)without delay, and

(b)in the case of works in printed form, at the latest in the next edition of the publication.

(4)If the publisher fails to take any action required by subsection (2) the court may, on an application by the proprietor—

(a)order the publisher to take the action concerned;

(b)if the work is in printed form, order the publisher to erase or amend the reproduction of the trade mark or secure the destruction of copies of the work in the publisher’s possession, custody or control; or

(c)grant such other order as the court in the circumstances considers appropriate.]

Textual Amendments

100 Burden of proving use of trade mark.U.K.

If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it.

101 Offences committed by partnerships and bodies corporate.U.K.

(1)Proceedings for an offence under this Act alleged to have been committed by a partnership shall be brought against the partnership in the name of the firm and not in that of the partners; but without prejudice to any liability of the partners under subsection (4) below.

(2)The following provisions apply for the purposes of such proceedings as in relation to a body corporate—

(a)any rules of court relating to the service of documents;

(b)in England and Wales or Northern Ireland, Schedule 3 to the M10Magistrates’ Courts Act 1980 or Schedule 4 to the M11Magistrates’ Courts (Northern Ireland) Order 1981 (procedure on charge of offence).

(3)A fine imposed on a partnership on its conviction in such proceedings shall be paid out of the partnership assets.

(4)Where a partnership is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent the commission of the offence, is also guilty of the offence and liable to be proceeded against and punished accordingly.

(5)Where an offence under this Act committed by a body corporate is proved to have been committed with the consent or connivance of a director, manager, secretary or other similar officer of the body, or a person purporting to act in any such capacity, he as well as the body corporate is guilty of the offence and liable to be proceeded against and punished accordingly.

Modifications etc. (not altering text)

C77S. 101 applied (20.9.1995) by 1995 c. 32, s. 10; S.I. 1995/2472, art. 2

Marginal Citations

InterpretationU.K.

102 Adaptation of expressions for Scotland.U.K.

In the application of this Act to Scotland—

  • “account of profits” means accounting and payment of profits;

  • “accounts” means count, reckoning and payment;

  • “assignment” means assignation;

  • “costs” means expenses;

  • “declaration” means declarator;

  • “defendant” means defender;

  • “delivery up” means delivery;

  • “injunction” means interdict;

  • “interlocutory relief” means interim remedy; and

  • “plaintiff” means pursuer.

103 Minor definitions.U.K.

(1)In this Act—

  • “business” includes a trade or profession;

  • “director”, in relation to a body corporate whose affairs are managed by its members, means any member of the body;

  • “infringement proceedings”, in relation to a registered trade mark, includes proceedings under section 16 (order for delivery up of infringing goods, &c.);

  • “publish” means make available to the public, and references to publication—

    (a)

    in relation to an application for registration, are to publication under section 38(1), and

    (b)

    in relation to registration, are to publication under section 40(4);

  • “statutory provisions” includes provisions of subordinate legislation within the meaning of the M12Interpretation Act 1978;

  • “trade” includes any business or profession.

(2)References in this Act to use (or any particular description of use) of a trade mark, or of a sign identical with, similar to, or likely to be mistaken for a trade mark, include use (or that description of use) otherwise than by means of a graphic representation.

F194(3). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

Marginal Citations

104 Index of defined expressions.U.K.

In this Act the expressions listed below are defined by or otherwise fall to be construed in accordance with the provisions indicated—

account of profits and accounts (in Scotland)section 102
appointed person (for purposes of section 76)section 77
assignment (in Scotland)section 102
businesssection 103(1)
certification marksection 50(1)
collective marksection 49(1)
commencement (of this Act)section 109(2)
[F195comparable trade mark (EU) Schedule 2A, paragraph 1(2)]
F196. . .F196. . .
F197. . .F197. . .
[F198comparable trade mark (IR) Schedule 2B, paragraph 1(4)]
Convention countrysection 55(1)(b)
costs (in Scotland)section 102
the courtsection 75
date of applicationsection 33(2)
[F199date of application (comparable trade mark (EU)) Schedule 2A, paragraph 1(8)(b)]
[F200date of application (comparable trade mark (IR)) Schedule 2B, paragraph 1(10)(b)]
date of filingsection 33(1)
[F201date of filing (comparable trade mark (EU)) Schedule 2A, paragraph 1(8)(a)]
[F202date of filing (comparable trade mark (IR)) Schedule 2B, paragraph 1(10)(a)]
date of registrationsection 40(3)
[F203date of registration (comparable trade mark (EU)) Schedule 2A, paragraph 1(4)]
[F204date of registration (comparable trade mark (IR)) Schedule 2B, paragraph 1(6)]
defendant (in Scotland)section 102
delivery up (in Scotland)section 102
directorsection 103(1)
earlier rightsection 5(4)
earlier trade marksection 6
[F205European Customs Enforcement Regulationsection 10A]
[F206European Union trade mark][F206section 51]
[F207European Union Trade Mark Regulation][F207section 51]
exclusive licence and licenseesection 29(1)
infringement (of registered trade mark)sections 9(1) and (2) and 10
infringement proceedingssection 103(1)
infringing articlessection 17
infringing goodssection 17
infringing materialsection 17
injunction (in Scotland)section 102
interlocutory relief (in Scotland)section 102
the International Bureausection 53
F208. . .F208. . .
international trade mark (UK)section 53
Madrid Protocolsection 53
Paris Conventionsection 55(1)(a)
plaintiff (in Scotland)section 102
prescribedsection 78(1)(b)
protected under the Paris Convention
—well-known trade markssection 56(1)
—state emblems and official signs or hallmarkssection 57(1)
—emblems, &c. of international organisationssection 58(2)
publish and references to publicationsection 103(1)
register, registered (and related expressions)section 63(1)
registered trade mark [F209attorney ]section 83[F210(2)]
registrable transactionsection 25(2)
the registrarsection 62
rulessection 78
statutory provisionssection 103(1)
tradesection 103(1)
trade mark
—generallysection 1(1)
—includes collective mark or certification marksection 1(2)
United Kingdom (references include Isle of Man)section 108(2)
use (of trade mark or sign)section 103(2)
well-known trade mark (under Paris Convention)section 56(1)

Textual Amendments

F205Words in s. 104 inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 32(2) (with Pt. 5)

Other general provisionsU.K.

105 Transitional provisions.U.K.

The provisions of Schedule 3 have effect with respect to transitional matters, including the treatment of marks registered under the M13Trade Marks Act 1938, and applications for registration and other proceedings pending under that Act, on the commencement of this Act.

Marginal Citations

106 Consequential amendments and repeals.U.K.

(1)The enactments specified in Schedule 4 are amended in accordance with that Schedule, the amendments being consequential on the provisions of this Act.

(2)The enactments specified in Schedule 5 are repealed to the extent specified.

107 Territorial waters and the continental shelf.U.K.

(1)For the purposes of this Act the territorial waters of the United Kingdom shall be treated as part of the United Kingdom.

(2)This Act applies to things done in the United Kingdom sector of the continental shelf on a structure or vessel which is present there for purposes directly connected with the exploration of the sea bed or subsoil or the exploitation of their natural resources as it applies to things done in the United Kingdom.

(3)The United Kingdom sector of the continental shelf means the areas designated by order under section 1(7) of the M14Continental Shelf Act 1964.

Marginal Citations

108 Extent.U.K.

(1)This Act extends to England and Wales, Scotland and Northern Ireland.

(2)This Act also extends to the Isle of Man, subject to such exceptions and modifications as Her Majesty may specify by Order in Council; and subject to any such Order references in this Act to the United Kingdom shall be construed as including the Isle of Man.

Subordinate Legislation Made

P1S. 108(2) power fully exercised (13.3.1996): 1.4.1996 appointed day by S.I. 1996/729

109 Commencement.U.K.

(1)The provisions of this Act come into force on such day as the Secretary of State may appoint by order made by statutory instrument.

Different days may be appointed for different provisions and different purposes.

(2)The references to the commencement of this Act in Schedules 3 and 4 (transitional provisions and consequential amendments) are to the commencement of the main substantive provisions of Parts I and III of this Act and the consequential repeal of the Trade Marks Act 1938.

Provision may be made by order under this section identifying the date of that commencement.

Subordinate Legislation Made

P2S. 109 power fully exercised (29.9.1994): 29.9.1994 appointed for specified provisions and 31.10.1994 appointed by S.I. 1994/2550, arts. 2, 3

110 Short title.U.K.

This Act may be cited as the Trade Marks Act 1994.

SCHEDULES

Section 49.

SCHEDULE 1U.K. Collective marks

Commencement Information

I28Sch. 1 wholly in force at 31.10.1994; Sch. 1 not in force at Royal Assent; Sch. 1 para. 6(2) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as Sch. 1 not alredy in force by 1994/2550, arts. 2, 3(1), Sch.

GeneralU.K.

1U.K.The provisions of this Act apply to collective marks subject to the following provisions.

Signs of which a collective mark may consistU.K.

2U.K.In relation to a collective mark the reference in section 1(1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

Indication of geographical originU.K.

3(1)Notwithstanding section 3(1)(c), a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.U.K.

(2)However, the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).

Mark not to be misleading as to character or significanceU.K.

4(1)A collective mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a collective mark.U.K.

(2)The registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a collective mark.

Notwithstanding section 39(2), an application may be amended so as to comply with any such requirement.

Regulations governing use of collective markU.K.

5(1)An applicant for registration of a collective mark must file with the registrar regulations governing the use of the mark.U.K.

(2)The regulations must specify the persons authorised to use the mark, the conditions of membership of the association and F211... the conditions of use of the mark, including any sanctions against misuse.

[F212(3)Where the regulations govern use of a mark referred to in paragraph 3(1), they must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark, provided that the person fulfils all the other conditions of the regulations.]

[F213(4)] Further requirements with which the regulations have to comply may be imposed by rules.

Textual Amendments

F211Words in Sch. 1 para. 5(2) omitted (14.1.2019) by virtue of The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(2)(a) (with Pt. 5)

F212Sch. 1 para. 5(3) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(2)(c) (with Pt. 5)

F213Words in Sch. 1 para. 5(2) renumbered as Sch. 1 para. 5(4) (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(2)(b) (with Pt. 5)

Approval of regulations by registrarU.K.

6(1)A collective mark shall not be registered unless the regulations governing the use of the mark—U.K.

(a)comply with paragraph 5(2) [F214and (3)] and any further requirements imposed by rules, and

(b)are not contrary to public policy or to accepted principles of morality.

(2)Before the end of the prescribed period after the date of the application for registration of a collective mark, the applicant must file the regulations with the registrar and pay the prescribed fee.

If he does not do so, the application shall be deemed to be withdrawn.

Textual Amendments

F214Words in Sch. 1 para. 6(1)(a) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(3) (with Pt. 5)

Commencement Information

I29Sch. 1 wholly in force at 31.10.1994; Sch. 1 not in force at Royal Assent see s. 109; Sch. 1 para. 6(2) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as Sch. 1 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

7(1)The registrar shall consider whether the requirements mentioned in paragraph 6(1) are met.U.K.

(2)If it appears to the registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to file amended regulations.

(3)If the applicant fails to satisfy the registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse the application.

(4)If it appears to the registrar that those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 38 (publication, opposition proceedings and observations).

8U.K.The regulations shall be published and notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 6(1).

This is in addition to any other grounds on which the application may be opposed or observations made.

Regulations to be open to inspectionU.K.

9U.K.The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the register.

Amendment of regulationsU.K.

10(1)An amendment of the regulations governing the use of a registered collective mark is not effective unless and until the amended regulations are filed with the registrar and accepted by him.U.K.

(2)Before accepting any amended regulations the registrar may in any case where it appears to him expedient to do so cause them to be published.

(3)If he does so, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 6(1).

Infringement: rights of authorised usersU.K.

11U.K.The following provisions apply in relation to an authorised user of a registered collective mark as in relation to a licensee of a trade mark—

(a)section 10(5) (definition of infringement: unauthorised application of mark to certain material);

(b)section 19(2) (order as to disposal of infringing goods, material or articles: adequacy of other remedies);

(c)section 89 (prohibition of importation of infringing goods, material or articles: request to Commissioners of Customs and Excise).

12(1)The following provisions (which correspond to the provisions of section 30 (general provisions as to rights of licensees in case of infringement)) have effect as regards the rights of an authorised user in relation to infringement of a registered collective mark.U.K.

[F215(2)Subject to any agreement to the contrary between the authorised user and the proprietor, an authorised user may only bring proceedings for infringement of a registered collective mark with the consent of the proprietor.]

F216(3). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(4)[F217Where proceedings are brought by an authorised user for infringement of a registered collective mark (with the consent of the proprietor or pursuant to any agreement referred to in sub-paragraph (2))], the authorised user may not, without the leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant.

This does not affect the granting of interlocutory relief on an application by an authorised user alone.

(5)A proprietor who is added as a defendant as mentioned in sub-paragraph (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.

(6)In infringement proceedings brought by the proprietor of a registered collective mark any loss suffered or likely to be suffered by authorised users shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.

[F218(7)Where the proprietor of a registered collective mark brings infringement proceedings, an authorised user who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.]

Textual Amendments

F215Sch. 1 para. 12(2) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(4)(a) (with Pt. 5)

F216Sch. 1 para. 12(3) omitted (14.1.2019) by virtue of The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(4)(b) (with Pt. 5)

F217Words in Sch. 1 para. 12(4) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(4)(c) (with Pt. 5)

F218Sch. 1 para. 12(7) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(4)(d) (with Pt. 5)

Grounds for revocation of registrationU.K.

13U.K.Apart from the grounds of revocation provided for in section 46, the registration of a collective mark may be revoked on the ground—

(a)that the manner in which the mark has been used by the [F219persons authorised to use it] has caused it to become liable to mislead the public in the manner referred to in paragraph 4(1), or

(b)that the proprietor [F220has not taken reasonable steps to prevent the mark being used in a manner that is incompatible with the conditions of use laid down in] the regulations governing the use of the mark [F221(as amended from time to time)], or

(c)that an amendment of the regulations has been made so that the regulations—

(i)no longer comply with paragraph 5(2) [F222and (3)] and any further conditions imposed by rules, or

(ii)are contrary to public policy or to accepted principles of morality.

Textual Amendments

F219Words in Sch. 1 para. 13(a) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(5)(a) (with Pt. 5)

F220Words in Sch. 1 para. 13(b) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(5)(b)(i) (with Pt. 5)

F221Words in Sch. 1 para. 13(b) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(5)(b)(ii) (with Pt. 5)

F222Words in Sch. 1 para. 13(c)(i) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(5)(c) (with Pt. 5)

Grounds for invalidity of registrationU.K.

14U.K.Apart from the grounds of invalidity provided for in section 47, the registration of a collective mark [F223shall] be declared invalid on the ground that the mark was registered in breach of the provisions of [F224section 49(1A) (definition of who may be registered as the proprietor of a certification mark) or] paragraph 4(1) or 6(1) [F225unless the breach was only of paragraph 6(1) and the proprietor of the mark, by amending the regulations governing use, complies with the requirements of paragraph 6(1)].

Textual Amendments

F223Word in Sch. 1 para. 14 substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(6)(a) (with Pt. 5)

F224Words in Sch. 1 para. 14 inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(6)(b) (with Pt. 5)

F225Words in Sch. 1 para. 14 inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 33(6)(c) (with Pt. 5)

Section 50.

SCHEDULE 2U.K. Certification marks

Commencement Information

I30Sch. 2 wholly in force; Sch. 2 not in force at Royal Assent see s. 109; Sch. 2 para. 7(2) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as Sch. 2 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

GeneralU.K.

1U.K.The provisions of this Act apply to certification marks subject to the following provisions.

Signs of which a certification mark may consistU.K.

2U.K.In relation to a certification mark the reference in section 1(1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services which are certified from those which are not.

Indication of geographical originU.K.

3(1)Notwithstanding section 3(1)(c), a certification mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.U.K.

(2)However, the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).

Nature of proprietor’s businessU.K.

4U.K.A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified.

Mark not to be misleading as to character or significanceU.K.

5(1)A certification mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a certification mark.U.K.

(2)The registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a certification mark.

Notwithstanding section 39(2), an application may be amended so as to comply with any such requirement.

Regulations governing use of certification markU.K.

6(1)An applicant for registration of a certification mark must file with the registrar regulations governing the use of the mark.U.K.

(2)The regulations must indicate who is authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes.

Further requirements with which the regulations have to comply may be imposed by rules.

Approval of regulations, &c.U.K.

7(1)A certification mark shall not be registered unless—U.K.

(a)the regulations governing the use of the mark—

(i)comply with paragraph 6(2) and any further requirements imposed by rules, and

(ii)are not contrary to public policy or to accepted principles of morality, and

(b)the applicant is competent to certify the goods or services for which the mark is to be registered.

(2)Before the end of the prescribed period after the date of the application for registration of a certification mark, the applicant must file the regulations with the registrar and pay the prescribed fee.

If he does not do so, the application shall be deemed to be withdrawn.

Commencement Information

I31Sch. 2 wholly in force; Sch. 2 not in force at Royal Assent see s. 109; Sch. 2 para. 7(2) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as Sch. 2 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

8(1)The registrar shall consider whether the requirements mentioned in paragraph 7(1) are met.U.K.

(2)If it appears to the registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to file amended regulations.

(3)If the applicant fails to satisfy the registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse the application.

(4)If it appears to the registrar that those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 38 (publication, opposition proceedings and observations).

9U.K.The regulations shall be published and notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 7(1).

This is in addition to any other grounds on which the application may be opposed or observations made.

Regulations to be open to inspectionU.K.

10U.K.The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the register.

Amendment of regulationsU.K.

11(1)An amendment of the regulations governing the use of a registered certification mark is not effective unless and until the amended regulations are filed with the registrar and accepted by him.U.K.

(2)Before accepting any amended regulations the registrar may in any case where it appears to him expedient to do so cause them to be published.

(3)If he does so, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 7(1).

Consent to assignment of registered certification markU.K.

12U.K.The assignment or other transmission of a registered certification mark is not effective without the consent of the registrar.

Infringement: rights of authorised usersU.K.

13U.K.The following provisions apply in relation to an authorised user of a registered certification mark as in relation to a licensee of a trade mark—

(a)section 10(5) (definition of infringement: unauthorised application of mark to certain material);

(b)section 19(2) (order as to disposal of infringing goods, material or articles: adequacy of other remedies);

(c)section 89 (prohibition of importation of infringing goods, material or articles: request to Commissioners of Customs and Excise).

14U.K.In infringement proceedings brought by the proprietor of a registered certification mark any loss suffered or likely to be suffered by authorised users shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.

Grounds for revocation of registrationU.K.

15U.K.Apart from the grounds of revocation provided for in section 46, the registration of a certification mark may be revoked on the ground—

(a)that the proprietor has begun to carry on such a business as is mentioned in paragraph 4,

(b)that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 5(1),

(c)that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark,

(d)that an amendment of the regulations has been made so that the regulations—

(i)no longer comply with paragraph 6(2) and any further conditions imposed by rules, or

(ii)are contrary to public policy or to accepted principles of morality, or

(e)that the proprietor is no longer competent to certify the goods or services for which the mark is registered.

Grounds for invalidity of registrationU.K.

16U.K.Apart from the grounds of invalidity provided for in section 47, the registration of a certification mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4, 5(1) or 7(1).

Section 52A

[F226SCHEDULE 2AU.K.EUROPEAN UNION TRADE MARKS

Textual Amendments

PART 1U.K.Existing European Union trade marks

A trade mark registered as an existing EUTM to be treated as registered under this ActU.K.

1(1)A trade mark which is registered in the EUTM Register immediately before IP completion day (an “existing EUTM”) 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 as the existing EUTM is registered in the EUTM Register.

(2)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 (EU).

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

(4)A comparable trade mark (EU) is deemed for the purposes of this Act to be registered as of the filing date accorded pursuant to Article 32 to the application which resulted in the registration of the corresponding EUTM and that date is deemed for the purposes of this Act to be the date of registration.

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

(6)Section 67(1) applies in relation to the provision of information and the inspection of documents relating to a comparable trade mark (EU) 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).

(7)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 (EU) (see instead provision made by regulations under Schedule 4 to the European Union (Withdrawal) Act 2018).

(8)For the purposes of this Act—

(a)the date of filing of an application for registration of a comparable trade mark (EU) is the filing date accorded pursuant to Article 32 to the application which resulted in the registration of the corresponding EUTM;

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

(c)where an earlier trade mark is a comparable trade mark (EU), references to the completion of the registration procedure for the earlier trade mark are to the completion of the registration procedure in respect of the corresponding EUTM.

(9)In this Schedule—

(a)“corresponding EUTM”, in relation to a comparable trade mark (EU), means the existing EUTM from which the comparable trade mark (EU) derives;

(b)“the EUTM Register” means the register of European Union trade marks maintained by the European Union Intellectual Property Office.

Opt outU.K.

2(1)Subject to sub-paragraph (2), the proprietor of an existing EUTM may, at any time on or after IP completion day, serve notice on the registrar that the trade mark is not to be treated as if the trade mark had been registered under this Act (an “opt out notice”).

(2)An opt out notice may not be served where on or after IP completion day—

(a)the comparable trade mark (EU) has been put to use in the United Kingdom by the proprietor or with the proprietor's consent (which use includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes);

(b)the comparable trade mark (EU) (or any right in or under it) has been made the subject of an assignment, licence, security interest or any other agreement or document except for an assent by personal representatives in relation to the comparable trade mark (EU); or

(c)proceedings based on the comparable trade mark (EU) have been initiated by the proprietor or with the proprietor's consent.

(3)An opt out notice must—

(a)identify the existing EUTM; and

(b)include the name and address of any person having an interest in the existing EUTM which had effect before IP completion day in the United Kingdom, and in respect of which an entry was recorded in the EUTM Register.

(4)An opt out notice is of no effect unless the proprietor in that notice certifies that any such person—

(a)has been given not less than three months' notice of the proprietor's intention to serve an opt out notice; or

(b)is not affected or if affected, consents to the opt out.

(5)Where a notice has been served in accordance with this paragraph—

(a)the comparable trade mark (EU) which derives from the existing EUTM ceases with effect from IP completion day to be treated as if it had been registered under this Act; and

(b)the registrar must, where particulars of the comparable trade mark (EU) have been entered in the register, remove the comparable trade mark (EU) from the register.

Entries to be made in the register in relation to a comparable trade mark (EU)U.K.

3(1)The registrar must as soon as reasonably practicable after IP completion day enter a comparable trade mark (EU) in the register.

(2)The particulars of the goods or services in respect of which the comparable trade mark (EU) is treated as if it had been registered must be taken from the English language version of the entry for the corresponding EUTM in the EUTM Register.

(3)Where—

(a)the application for registration of the corresponding EUTM was not filed in English; or

(b)the second language indicated by the applicant pursuant to Article 146(3) was a language other than English,

a person having a sufficient interest who considers that the English language version is inaccurate may apply to the registrar for rectification of the register by the substitution of an English translation of the relevant authentic text (as determined in accordance with Article 147(3)) verified to the satisfaction of the registrar as corresponding to the authentic text.

Comparable trade mark (EU) which derives from an EU Collective Mark or EU Certification MarkU.K.

4(1)This paragraph applies where the European Union trade mark from which a comparable trade mark (EU) derives is an EU collective mark or an EU certification mark.

(2)The comparable trade mark (EU) is to be treated as either a collective mark or a certification mark, as the case may be.

(3)The proprietor of the comparable trade mark (EU) must, following notice from the registrar, file with the registrar regulations governing the use of the European Union trade mark, submitted pursuant to the European Union Trade Mark Regulation, which had effect immediately before IP completion day.

(4)Where the regulations referred to in sub-paragraph (3) are in a language other than English they must be filed together with a translation into English verified to the satisfaction of the registrar as corresponding to the original text.

(5)Paragraph 9 of Schedule 1 and paragraph 10 of Schedule 2 apply in relation to the translation referred to in sub-paragraph (4) as they apply in relation to the regulations referred to in sub-paragraph (3).

(6)Where the regulations or any translation are not filed in accordance with the above provisions—

(a)the registrar must remove the comparable trade mark (EU) from the register; and

(b)the rights of the proprietor shall be deemed to have ceased as from the date of removal.

Renewal of a comparable trade mark (EU) which expires within six months after IP completion dayU.K.

5(1)This paragraph applies to the renewal of the registration of a comparable trade mark (EU) which expires within the period beginning with IP completion day and ending with the end of the relevant period (and accordingly section 43(1) to (3A) does not apply).

(2)The registration of the comparable trade mark (EU) may be renewed at the request of the proprietor before the expiry of the registration.

(3)Where the registration of the comparable trade mark (EU) is not renewed in accordance with sub-paragraph (2)—

(a)on, or as soon as reasonably practicable after, the expiry of the registration, the registrar must notify the proprietor that the registration has expired and of the manner in which the registration may be renewed; and

(b)a request for renewal must be made within the period of six months beginning with the date of the notice.

(4)If a request for renewal is made in respect of only some of the goods or services for which the comparable trade mark (EU) is registered, the registration is to be renewed for those goods or services only.

(5)If the registration is not renewed in accordance with the above provisions, the registrar must remove the comparable trade mark (EU) from the register.

(6)Section 43(4) and (6) applies to the registration of a comparable trade mark (EU) which is renewed in accordance with the above provisions.

(7)In paragraph (1), the “relevant period” means the period of six months beginning with the day after that on which IP completion day falls.

Restoration of a comparable trade mark (EU)U.K.

6Where a comparable trade mark (EU) is removed from the register pursuant to paragraph 5, the rules relating to the restoration of the registration of a trade mark (referred to in section 43(5)) apply in relation to the restoration of the comparable trade mark (EU) to the register.

Raising of relative grounds in opposition proceedings in case of non-useU.K.

7(1)Section 6A applies where an earlier trade mark is a comparable trade mark (EU), subject to the modifications set out below.

(2)Where the relevant period referred to in section 6A(3)(a) (the “five-year period”) has expired before IP completion day—

(a)the references in section 6A(3) and (6) to the earlier trade mark are to be treated as references to the corresponding EUTM; and

(b)the references in section 6A(3) and (4) to the United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion day—

(a)the references in section 6A(3) and (6) to the earlier trade mark are to be treated as references to the corresponding EUTM ; and

(b)the references in section 6A to the United Kingdom include the European Union.

Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (EU)U.K.

8(1)Sections 11A and 46 apply in relation to a comparable trade mark (EU), subject to the modifications set out below.

(2)Where the period of five years referred to in sections 11A(3)(a) and 46(1)(a) or (b) (the “five-year period”) has expired before IP completion day—

(a)the references in sections 11A(3) and (insofar as they relate to use of a trade mark) 46 to a trade mark are to be treated as references to the corresponding EUTM; and

(b)the references in sections 11A and 46 to the United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion day—

(a)the references in sections 11A(3) and (insofar as they relate to use of a trade mark) 46 to a trade mark, are to be treated as references to the corresponding EUTM ; and

(b)the references in sections 11A and 46 to the United Kingdom include the European Union.

Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (EU)U.K.

9(1)Section 47 applies where an earlier trade mark is a comparable trade mark (EU), subject to the modifications set out below.

(2)Where the period of five years referred to in sections 47(2A)(a) and 47(2B) (the “five-year period”) has expired before IP completion day—

(a)the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as references to the corresponding EUTM ; and

(b)the references in section 47 to the United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion day—

(a)the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as references to the corresponding EUTM ; and

(b)the references in section 47 to the United Kingdom include the European Union.

Reputation of a comparable trade mark (EU)U.K.

10(1)Sections 5 and 10 apply in relation to a comparable trade mark (EU), subject to the modifications set out below.

(2)Where the reputation of a comparable trade mark (EU) falls to be considered in respect of any time before IP completion day, references in sections 5(3) and 10(3) to—

(a)the reputation of the mark are to be treated as references to the reputation of the corresponding EUTM; and

(b)the United Kingdom include the European Union.

Rights conferred by registered trade markU.K.

11Section 9 applies in relation to a comparable trade mark (EU) but as if—

(a)the words in brackets in subsection (3) referring to section 40(3) were replaced with a reference to paragraph 1(4) of this Schedule; and

(b)the proviso in subsection (3) were omitted.

Effect of claim of priorityU.K.

12(1)This paragraph applies where—

(a)the proprietor of an existing EUTM has claimed a right of priority in accordance with Article 35; and

(b)immediately before IP completion day there is an entry in the EUTM Register containing particulars of that claim of priority (a “claim of priority”).

(2)The proprietor of the comparable trade mark (EU) which derives from the existing EUTM is to be treated on and after IP completion day as having the same claim of priority.

(3)Accordingly, the relevant date for the purposes of establishing, in relation to the comparable trade mark (EU), which rights take precedence is the date of filing of the application for a trade mark in a Convention country which formed the basis for the claim of priority.

Effect of seniority claimU.K.

13(1)This paragraph applies where immediately before IP completion day an existing EUTM has a valid claim to seniority of a trade mark which trade mark (the “senior mark”) is a registered trade mark or a protected international trade mark (UK).

(2)The comparable trade mark (EU) which derives from the existing EUTM is to be treated on and after IP completion day as if it had a valid claim to seniority of the senior mark.

(3)Accordingly, where the proprietor of the comparable trade mark (EU) surrenders the senior mark or allows it to lapse (whether wholly or partially), subject to paragraph 14, the proprietor of the comparable trade mark (EU) is deemed to continue to have the same rights as the proprietor would have had if the senior mark had continued to be registered in respect of all the goods or services for which it was registered prior to the surrender or lapse.

(4)An existing EUTM has a valid claim to seniority of a trade mark where—

(a)a claim has been filed in accordance with Article 39 or 40; and

(b)the seniority claimed for the existing EUTM has not lapsed in the circumstances referred to in Article 39.

Determination of invalidity and liability to revocation in relation to claims of seniorityU.K.

14(1)Where pursuant to paragraph 13 a comparable trade mark (EU) is treated as if it had a valid claim to seniority of a registered trade mark which has been—

(a)removed from the register under section 43; or

(b)surrendered under section 45,

any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (2).

(2)The declaration is that if the trade mark had not been so removed or surrendered, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.

(3)Where the declaration is that had the trade mark not been so removed or surrendered the registration of it would have been liable to be—

(a)revoked under section 46 with effect from a date prior to—

(i)the filing date accorded pursuant to Article 32 to the application which resulted in the registration of the existing EUTM from which the comparable trade mark (EU) derives where there has been no claim of priority; or

(ii)the priority date (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM from which the comparable trade mark (EU) derives where there has been a claim of priority; or

(b)declared invalid under section 47,

the seniority claimed for the comparable trade mark (EU) is to be treated as if it never had effect.

(4)Where pursuant to paragraph 13 a comparable trade mark (EU) is treated as if it had a valid claim to seniority of a protected international trade mark (UK) which has been—

(a)removed from the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol; or

(b)surrendered under the Madrid Protocol,

any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (5).

(5)The declaration is that, if the trade mark had not been so removed or surrendered, the protection of the mark in the United Kingdom would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.

(6)Where the declaration is that had the trade mark not been so removed or surrendered the protection of the mark in the United Kingdom would have been liable to be—

(a)revoked under section 46 with effect from a date prior to—

(i)the filing date accorded pursuant to Article 32 to the application which resulted in the registration of the existing EUTM from which the comparable trade mark (EU) derives where there has been no claim of priority; or

(ii)the priority date (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM from which the comparable trade mark (EU) derives where there has been a claim of priority; or

(b)declared invalid under section 47,

the seniority claimed for the comparable trade mark (EU) is to be treated as if it never had effect.

(7)References in sub-paragraphs (5) and (6) to sections 46 and 47 are to those sections as they apply to a protected international trade mark (UK) under an order made pursuant to section 54.

(8)Where a trade mark has been surrendered or allowed to lapse in respect of some only of the goods or services for which it is registered, the declaration in sub-paragraphs (2) and (5) is that if the goods or services had not been removed from the registration, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47 and sub-paragraphs (3) and (6) shall be construed accordingly.

Procedure for declaration that trade mark would have been liable to be revoked or declared invalidU.K.

15(1)In the case of proceedings on an application under paragraph 14 before the registrar, the rules relating to applications for and proceedings relating to the revocation or invalidation of a trade mark apply, with necessary modifications.

(2)In the case of proceedings on an application under paragraph 14 before the court, section 74 applies to the proceedings as it applies to proceedings involving an application of the type referred to in section 74(1)(a) to (c).

Assignment of an existing EUTM not registered on IP completion dayU.K.

16(1)This paragraph applies where before IP completion day an existing EUTM (or any right in it) is the subject of an assignment (a “relevant assignment”) which immediately before IP completion day is not recorded in the EUTM Register.

(2)Section 25 applies in relation to a relevant assignment as if it were a registrable transaction affecting a comparable trade mark (EU), subject to the modification set out below.

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

(a)a person claiming to be entitled to an interest in or under a comparable trade mark (EU) by virtue of a relevant assignment of the corresponding EUTM; or

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

Effect of a licence of an existing EUTMU.K.

17(1)This paragraph applies where immediately before IP completion day an existing EUTM 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 European Union 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 (EU) which derives from the existing EUTM.

(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 (EU), 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 (EU).

(6)Where immediately before IP completion day there is an entry in the EUTM 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 paragraph (6)(a), the “relevant period” means the period of twelve months beginning with the day after that on which IP completion day falls.

Effect of a security interest in an existing EUTMU.K.

18(1)This paragraph applies where immediately before IP completion day an existing EUTM (or any right in or under it) is the subject of a security interest (a “relevant security interest”) which does not terminate on IP completion day.

(2)References to the existing EUTM in any document which grants or refers to the relevant security interest are to be read as including references to the comparable trade mark (EU) which derives from the existing EUTM.

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

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

(a)a person claiming to be entitled to an interest in or under a comparable trade mark (EU) by virtue of the relevant security interest; or

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

(5)Where immediately before IP completion day there is an entry in the EUTM Register relating to a relevant security interest—

(a)section 25(3) and (4) do 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.

(6)In paragraph (5)(a), the “relevant period” means the period of twelve months beginning with the day after that on which IP completion day falls.

Continuity of rights in relation to a comparable trade mark (EU)U.K.

19(1)References to an existing EUTM or the registration of an existing EUTM in any document made before IP completion day shall, unless there is evidence that the document was not intended to have effect in the United Kingdom, be read on and after IP completion day as including references to the comparable trade mark (EU) or the registration of the comparable trade mark (EU) which derives from the existing EUTM.

(2)Subject to any agreement to the contrary, a consent granted before IP completion day by the proprietor of an existing EUTM to the doing on or after IP completion day of an act in the United Kingdom which would otherwise infringe the comparable trade mark (EU) which derives from the existing EUTM is to be treated for the purposes of section 9 as a consent to the doing of that act.

Existing EUTM: pending proceedingsU.K.

20(1)This paragraph applies where on IP completion day an existing EUTM is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 123 (“EU trade mark court”).

(2)Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Chapter 10 of the European Union Trade Mark Regulation (with the exception of Articles 128(2), (4), (6) and (7) and 132) continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from IP completion day.

(3)Where the pending proceedings involve a claim for infringement of an existing EUTM, without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the existing EUTM, the EU trade mark court may grant an injunction to prohibit unauthorised use of the comparable trade mark (EU) which derives from the existing EUTM.

(4)Where the pending proceedings involve a counterclaim for the revocation of, or a declaration of invalidity in relation to, an existing EUTM, the EU trade mark court may revoke the registration of the comparable trade mark (EU) which derives from the existing EUTM or declare the registration of the comparable trade mark (EU) which derives from the existing EUTM to be invalid.

(5)Where the grounds for revocation or invalidity exist in respect of only some of the goods or services for which the existing EUTM is registered, the revocation or declaration of invalidity in respect of the registration of the comparable trade mark (EU) which derives from the existing EUTM relates to those goods or services only.

(6)Where (by virtue of sub-paragraph (4)) the registration of a comparable trade mark (EU) is revoked to any extent, the rights of the proprietor are deemed to have ceased to that extent as from—

(a)the date of the counterclaim for revocation, or

(b)if the court is satisfied that the grounds for revocation existed at an earlier date, that date.

(7)Where (by virtue of sub-paragraph (4)) the registration of a comparable trade mark (EU) is declared invalid to any extent, the registration is to that extent to be deemed never to have been made, provided that this does not affect transactions past and closed.

(8)For the purposes of this paragraph proceedings are treated as pending on IP completion day if they were instituted but not finally determined before IP completion day.

Existing EUTM: effect of injunctionU.K.

21(1)This paragraph applies where immediately before IP completion day an injunction is in force prohibiting the performance of acts in the United Kingdom which infringe or would infringe an existing EUTM (a “relevant injunction”).

(2)Subject to any order of the court to the contrary, a relevant injunction will have effect and be enforceable to prohibit the performance of acts which infringe or would infringe a comparable trade mark (EU) to the same extent as in relation to the European Union trade mark from which the comparable trade mark (EU) derives as if it were an injunction granted by the court.

Existing EUTM: effect of invalidity or revocationU.K.

21A.(1)This paragraph applies where, on IP completion day, an existing EUTM is the subject of proceedings under Article 58 (Grounds for revocation), 59 (Absolute grounds for invalidity) or 60 (Relative grounds for invalidity) which have been instituted but not finally determined before IP completion day (“cancellation proceedings”).

(2)Subject to sub-paragraph (4), where—

(a)the existing EUTM is revoked or declared invalid (whether wholly or partially) pursuant to a decision in the cancellation proceedings which is finally determined, and

(b)the registrar has—

(i)received notice of the situation referred to in paragraph (a) (“a cancellation notice”), or

(ii)otherwise become aware of the situation referred to in paragraph (a),

the registration of the comparable trade mark (EU) which derives from the existing EUTM must be revoked or declared invalid to the same extent as the existing EUTM.

(3)Where (by virtue of sub-paragraph (2)) the registration of a comparable trade mark (EU) is revoked or declared invalid to any extent, the registrar must—

(a)remove the comparable trade mark (EU) from the register (where the revocation or declaration of invalidity relates to all the goods or services for which the existing EUTM was registered); or

(b)amend the entry in the register listing the goods or services for which the comparable trade mark (EU) is registered (where the revocation or declaration of invalidity relates to only some of the goods or services for which the existing EUTM was registered).

(4)The registration of a comparable trade mark (EU) must not be revoked or declared invalid under sub-paragraph (2) where the grounds on which the existing EUTM was revoked or declared invalid (whether wholly or partially) would not apply or would not have been satisfied in relation to the comparable trade mark (EU)—

(a)if the comparable trade mark (EU) had existed as at the date the cancellation proceedings were instituted, and

(b)an application for the revocation or a declaration of invalidity of the comparable trade mark (EU) based on those grounds had been made on that date under section 46 or 47 (as the case may be).

(5)Where a comparable trade mark (EU) is revoked or declared invalid to any extent pursuant to this paragraph—

(a)the rights of the proprietor are deemed to have ceased to that extent as from the date on which the rights of the proprietor of the existing EUTM are deemed to have ceased under the EUTM Regulation;

(b)subject to any claim for compensation for damage caused by negligence or lack of good faith on the part of the proprietor or a claim for restitution based upon the unjust enrichment of the proprietor, the revocation or invalidity of the comparable trade mark (EU) does not affect—

(i)a decision arising from infringement proceedings which has been finally determined and which has been enforced prior to the date on which the entry in the register of the comparable trade mark (EU) has been removed or amended pursuant to sub-paragraph (3) (“the decision date”);

(ii)any contract entered into prior to the decision date to the extent that it has been performed prior to the decision date, subject to the right of a party to the contract to claim the repayment of any consideration paid under the contract where, having regard to the circumstances, it is fair and equitable for such repayment to be made.

(6)A cancellation notice may be submitted to the registrar by any person.

(7)For the purposes of this paragraph—

(a)proceedings are instituted if an application or counterclaim for revocation or for a declaration of invalidity—

(i)has been filed (and not subsequently withdrawn) with the European Union Intellectual Property Office or a court designated for the purposes of Article 123, and

(ii)meets the requirements for being accorded a filing date under the European Union Trade Mark Regulation and Commission Delegated Regulation (EU) 2018/625 of 5th March 2018;

(b)a decision is finally determined when—

(i)it has been determined, and

(ii)there is no further possibility of the determination being varied or set aside (disregarding any power to grant permission to appeal out of time).

PART 2U.K.Treatment of European Union trade marks which expire during the period of six months ending on IP completion day

Registration of certain expired European Union trade marksU.K.

22(1)This Part applies to a trade mark which was registered in the EUTM Register immediately before the transitional period but which, as a result of the expiry of the registration of the European Union trade mark during the transitional period, does not fall within paragraph 1(1) (an “expired EUTM”).

(2)An expired EUTM is to be treated as if it were an existing EUTM.

(3)The provisions of Part 1 of this Schedule apply to an expired EUTM as they apply to an existing EUTM subject to the provisions of this Part of the Schedule.

(4)Notwithstanding the entry in the register (under paragraph 3, as applied by sub-paragraph (3)) of a comparable trade mark (EU) which derives from an expired EUTM, the registration of the comparable trade mark (EU) is expired until it is renewed in accordance with paragraph 23 (or the comparable trade mark (EU) is removed from the register in accordance with paragraph 23(4)).

(5)In this paragraph, “transitional period” means the period of six months ending with IP completion day.

Renewal of an expired EUTMU.K.

23(1)Where the registration of an expired EUTM is renewed in accordance with Article 53 of the Continuing EUTM Regulation the registrar must, as soon as reasonably practicable after the date of such renewal, renew the registration of the comparable trade mark (EU) which derives from the expired EUTM.

(2)A comparable trade mark (EU) which is renewed under sub-paragraph (1) shall be renewed for a period of ten years from the expiry of the registration of the expired EUTM.

(3)If the registration of an expired EUTM is renewed in respect of only some of the goods or services in respect of which the expired EUTM was registered before its registration expired, the registration of the comparable trade mark (EU) under sub-paragraph (1) is to be renewed for those goods or services only.

(4)If the registration of an expired EUTM is not renewed within the time period permitted by Article 53 of the Continuing EUTM Regulation—

(a)the registrar must remove from the register the comparable trade mark (EU) which derives from the expired EUTM; and

(b)the comparable trade mark (EU) ceases with effect from IP completion day to be treated as if it had been registered under this Act.

(5)In this Schedule, the “Continuing EUTM Regulation” means Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark as it has effect in EU law.

PART 3U.K.Applications for European Union trade marks which are pending on IP completion day

Application of PartU.K.

24(1)This Part applies to an application for registration of a trade mark under the EUTM Regulation in respect of which the conditions in sub-paragraph (2) are satisfied (an “existing EUTM application”).

(2)The conditions referred to in sub-paragraph (1) are—

(a)the application has been accorded a filing date pursuant to Article 32; and

(b)as at the time immediately before IP completion day, the application has been neither granted nor refused by the European Union Intellectual Property Office.

Application for registration under this Act based upon an existing EUTM applicationU.K.

25(1)This paragraph applies where a person who has filed an existing EUTM application or a successor in title of that person applies for registration of the same trade mark under this Act for some or all of the same goods or services.

(2)Where an application for registration referred to in sub-paragraph (1) is made within a period beginning with IP completion day and ending with the end of the relevant period—

(a)the relevant date for the purposes of establishing which rights take precedence is the earliest of—

(i)the filing date accorded pursuant to Article 32 to the existing EUTM application;

(ii)the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM application; and

(b)the registrability of the trade mark shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in paragraph (a) and the date of the application under this Act.

(3)In paragraph (2), the “relevant period” means the period of nine months beginning with the day after that on which IP completion day falls.

Right to claim seniority where seniority has been claimed by an existing EUTM applicationU.K.

26(1)Where an existing EUTM application claims seniority of a trade mark which trade mark (“the senior mark”) is a registered trade mark or a protected international trade mark (UK), the applicant may claim seniority of the senior mark in an application for registration of a trade mark (“a relevant mark”) pursuant to this Part.

(2)The effect of a seniority claim made pursuant to sub-paragraph (1) is that where following the registration of the relevant mark the proprietor of that mark surrenders the senior mark or allows it to lapse (wholly or partially), subject to paragraph 27, the proprietor of the relevant mark is deemed to continue to have the same rights as the proprietor would have had if the senior mark had continued to be registered in respect of all the goods or services for which it was registered prior to the surrender or lapse.

(3)Provision may be made by rules as to the manner of claiming seniority pursuant to this paragraph.

Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 26U.K.

27(1)Where a relevant mark has claimed seniority of a registered trade mark which has been—

(a)removed from the register under section 43; or

(b)surrendered under section 45,

any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (2).

(2)The declaration is that, if the trade mark had not been so removed or surrendered, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.

(3)Where the declaration is that had the trade mark not been so removed or surrendered, the registration of it would have been liable to be—

(a)revoked under section 46 with effect from a date prior to—

(i)the filing date accorded pursuant to Article 32 to the existing EUTM application on which the application for registration of a relevant mark is based where there has been no claim of priority; or

(ii)the priority date (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM application on which the registration of a relevant mark is based where there has been a claim of priority; or

(b)declared invalid under section 47,

the seniority claimed for the relevant mark is to be treated as if it never had effect.

(4)Where a relevant mark has claimed seniority of a protected international trade mark (UK) which has been—

(a)removed from the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol; or

(b)surrendered under the Madrid Protocol,

any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (5).

(5)The declaration is that, if the trade mark had not been so removed or surrendered, the protection of the trade mark in the United Kingdom would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.

(6)Where the declaration is that had the trade mark not been so removed or surrendered, the registration of it would have been liable to be—

(a)revoked under section 46 with effect from a date prior to—

(i)the filing date accorded pursuant to Article 32 to the existing EUTM application on which the application for registration of a relevant mark is based where there has been no claim of priority; or

(ii)the priority date (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM application on which the registration of a relevant mark is based where there has been a claim of priority; or

(b)declared invalid under section 47,

the seniority claimed for the relevant mark is to be treated as if it never had effect.

(7)References in sub-paragraphs (5) and (6) to sections 46 and 47 are to those sections as they apply to a protected international trade mark (UK) under an order made pursuant to section 54.

(8)Where a trade mark has been surrendered or allowed to lapse in respect of only some of the goods or services for which it is registered, the declaration in sub-paragraphs (2) and (5) is that if the goods or services had not been removed from the registration, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47 and sub-paragraphs (3) and (6) shall be construed accordingly.

(9)The provisions of paragraph 15 apply in relation to an application under this paragraph as they apply to an application under paragraph 14.

PART 4U.K.Restoration of European Union trade mark registrations and applications

Restoration of a European Union trade mark to the EUTM RegisterU.K.

28(1)This paragraph applies where—

(a)before IP completion day a trade mark is removed from the EUTM Register pursuant to the European Union Trade Mark Regulation; and

(b)on or after IP completion day the trade mark is restored to the EUTM Register pursuant to the Continuing EUTM Regulation.

(2)Where the proprietor of a European Union trade mark referred to in sub-paragraph (1)(b) files a request with the registrar within the period of six months beginning with the date of such restoration—

(a)the trade mark will be treated as if it was an existing EUTM on IP completion day; and

(b)the provisions of Part 1 apply to the comparable trade mark (EU) which derives from the existing EUTM.

Restoration of an application for a European Union trade markU.K.

29(1)This paragraph applies where—

(a)before IP completion day an application for a European Union trade mark is refused pursuant to the European Union Trade Mark Regulation; and

(b)on or after IP completion day the application (a “relevant application”) is restored pursuant to the Continuing EUTM Regulation.

(2)Where a person who has filed a relevant application or a successor in title of that person applies for registration of the same trade mark under this Act for some or all of the same goods or services, the provisions of paragraphs 25, 26 and 27 apply to the relevant application as if it were an existing EUTM application but as if the “relevant period” in paragraph 25(2) meant the period of nine months beginning with the date on which the relevant application is restored as referred to in sub-paragraph (1)(b).

PART 5U.K.Interpretation

InterpretationU.K.

30(1)In this Schedule—

  • “comparable trade mark (EU)” has the meaning given by paragraph 1(2);

  • “the Continuing EUTM Regulation” has the meaning given by paragraph 23(5);

  • “corresponding EUTM” has the meaning given by paragraph 1(9)(a);

  • “the EUTM Register” has the meaning given by paragraph 1(9)(b);

  • “existing EUTM” has the meaning given by paragraph 1(1);

  • “existing EUTM application” has the meaning given by paragraph 24(1);

  • “expired EUTM” has the meaning given by paragraph 22(1);

  • “the previous EUTM Regulations” means Council Regulation (EC) No 207/2009 of 26th February 2009 on the European Union trade mark and Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade mark;

  • “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008.

(2)References in this Schedule to—

(a)an “Article” are to an Article of the European Union Trade Mark Regulation and include references to any equivalent Article contained in the previous EUTM Regulations;

(b)the European Union Trade Mark Regulation include references to the previous EUTM Regulations;

(c)a European Union trade mark include references to an EU collective mark and an EU certification mark as defined in Articles 74 and 83.]

Section 54A

[F227SCHEDULE 2BU.K.INTERNATIONAL TRADE MARKS PROTECTED IN THE EUROPEAN UNION

Textual Amendments

PART 1U.K.Existing international trade marks protected in the European Union

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

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.

Opt outU.K.

2(1)Subject to sub-paragraphs (2) and (6), the proprietor of an existing IR(EU) may, at any time on or after IP completion day, serve notice on the registrar that the trade mark is not to be treated as if the trade mark had been registered under this Act (an “opt out notice”).

(2)An opt out notice may not be served where on or after IP completion day—

(a)the comparable trade mark (IR) has been put to use in the United Kingdom by the proprietor or with the proprietor's consent (which use includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes);

(b)the comparable trade mark (IR) (or any right in or under it) has been made the subject of an assignment, licence, security interest or any other agreement or document except for an assent by personal representatives in relation to the comparable trade mark (IR); or

(c)proceedings based on the comparable trade mark (IR) have been initiated by the proprietor or with the proprietor's consent.

(3)An opt out notice must—

(a)identify the number of the international registration to which the existing IR(EU) to which the notice relates is subject; and

(b)include the name and address of any person having an interest in the existing IR(EU) which had effect before IP completion day in the United Kingdom, and in respect of which an entry was recorded in the International Register.

(4)An opt out notice is of no effect unless the proprietor in that notice certifies that any such person—

(a)has been given not less than three months' notice of the proprietor's intention to serve an opt out notice; or

(b)is not affected or if affected, consents to the opt out.

(5)Where a notice has been served in accordance with this paragraph—

(a)the comparable trade mark (IR) which derives from the existing IR(EU) ceases with effect from IP completion day to be treated as if it had been registered under this Act; and

(b)the registrar must, where particulars of the comparable trade mark (IR) have been entered in the register, remove the comparable trade mark (IR) from the register.

(6)Where an international trade mark which is protected in the European Union is treated as being more than one trade mark by virtue of paragraph 1(2)—

(a)an opt out notice must relate to all of the existing IR(EU)s which (by virtue of paragraph 1(2)) derive from the international trade mark;

(b)the references in sub-paragraph (2) to the comparable trade mark (IR) are to be read as references to any of the comparable trade marks (IR) which derive from the existing IR(EU)s to which the opt out notice relates; and

(c)the references in sub-paragraph (5) to the comparable trade mark (IR) are to be read as references to all of the comparable trade marks (IR) which derive from the existing IR(EU)s to which the notice relates.

Entries to be made in the register in relation to a comparable trade mark (IR)U.K.

3(1)The registrar must as soon as reasonably practicable after IP completion day enter a comparable trade mark (IR) in the register.

(2)The particulars of the goods or services in respect of which the comparable trade mark (IR) is treated as if it had been registered must be taken from the English language version of the entry in the International Register for the corresponding (IR).

(3)Where on or after IP completion day the entry in the International Register containing the particulars referred to in sub-paragraph (2) is modified to correct an error pursuant to Rule 28, a person having a sufficient interest may apply to the registrar for rectification of the register by the substitution of the English language version of the entry for the corresponding (IR) in the International Register as modified.

(4)In this Schedule, the “corresponding (IR)”, in relation to a comparable trade mark (IR), means the existing IR(EU) from which the comparable trade mark (IR) derives.

Comparable trade mark (IR) which derives from a mark treated as an EU Collective Mark or EU Certification MarkU.K.

4(1)This paragraph applies where the existing IR(EU) from which a comparable trade mark (IR) derives is dealt with for the purposes of the European Union Trade Mark Regulation as an EU collective mark or an EU certification mark.

(2)The comparable trade mark (IR) is to be treated as either a collective mark or a certification mark, as the case may be.

(3)The proprietor of the comparable trade mark (IR) must, following notice from the registrar, file with the registrar regulations governing the use of the international trade mark, submitted pursuant to the European Union Trade Mark Regulation, which had effect immediately before IP completion day.

(4)Where the regulations referred to in sub-paragraph (3) are in a language other than English they must be filed together with a translation into English verified to the satisfaction of the registrar as corresponding to the original text.

(5)Paragraph 9 of Schedule 1 and paragraph 10 of Schedule 2 apply in relation to the translation referred to in sub-paragraph (4) as they apply in relation to the regulations referred to in sub-paragraph (3).

(6)Where the regulations or any translation are not filed in accordance with the above provisions—

(a)the registrar must remove the comparable trade mark (IR) from the register; and

(b)the rights of the proprietor shall be deemed to have ceased as from the date of removal.

Renewal of a comparable trade mark (IR) which expires within six months after IP completion dayU.K.

5(1)This paragraph applies to the renewal of the registration of a comparable trade mark (IR) which expires within the period beginning with IP completion day and ending with the end of the relevant period (and accordingly section 43(1) to (3A) does not apply).

(2)The registration of the comparable trade mark (IR) may be renewed at the request of the proprietor before the expiry of the registration.

(3)Where the registration of the comparable trade mark (IR) is not renewed in accordance with sub-paragraph (2)—

(a)on, or as soon as reasonably practicable after, the expiry of the registration, the registrar must notify the proprietor that the registration has expired and of the manner in which the registration may be renewed; and

(b)a request for renewal must be made within the period of six months beginning with the date of the notice.

(4)If a request for renewal is made in respect of only some of the goods or services for which the comparable trade mark (IR) is registered, the registration is to be renewed for those goods or services only.

(5)If the registration is not renewed in accordance with the above provisions, the registrar must remove the comparable trade mark (IR) from the register.

(6)Section 43(4) and (6) applies to the registration of a comparable trade mark (IR) which is renewed in accordance with the above provisions.

(7)In sub-paragraph (1), the “relevant period” means the period of six months beginning with the day after that on which IP completion day falls.

Restoration of a comparable trade mark (IR)U.K.

6Where a comparable trade mark (IR) is removed from the register pursuant to paragraph 5, the rules relating to the restoration of the registration of a trade mark (referred to in section 43(5)) apply in relation to the restoration of the comparable trade mark (IR) to the register.

Raising of relative grounds in opposition proceedings in case of non-useU.K.

7(1)Section 6A applies where an earlier trade mark is a comparable trade mark (IR), subject to the modifications set out below.

(2)Where the relevant period referred to in section 6A(3)(a) (the “five-year period”) has expired before IP completion day—

(a)the references in section 6A(3) and (6) to the earlier trade mark are to be treated as references to the corresponding (IR); and

(b)the references in section 6A(3) and (4) to the United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion day—

(a)the references in section 6A(3) and (6) to the earlier trade mark are to be treated as references to the corresponding (IR); and

(b)the references in section 6A to the United Kingdom include the European Union.

Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (IR)U.K.

8(1)Sections 11A and 46 apply in relation to a comparable trade mark (IR), subject to the modifications set out below.

(2)Where the period of five years referred to in sections 11A(3)(a) and 46(1)(a) or (b) (the “five-year period”) has expired before IP completion day—

(a)the references in sections 11A(3) and (insofar as they relate to use of a trade mark) 46 to a trade mark are to be treated as references to the corresponding (IR); and

(b)the references in sections 11A and 46 to the United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion day—

(a)the references in sections 11A(3) and (insofar as they relate to use of a trade mark) 46 to a trade mark, are to be treated as references to the corresponding (IR); and

(b)the references in sections 11A and 46 to the United Kingdom include the European Union.

Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (IR)U.K.

9(1)Section 47 applies where an earlier trade mark is a comparable trade mark (IR), subject to the modifications set out below.

(2)Where the period of five years referred to in sections 47(2A)(a) and 47(2B) (the “five-year period”) has expired before IP completion day—

(a)the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as references to the corresponding (IR); and

(b)the references in section 47 to the United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion day—

(a)the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as references to the corresponding (IR); and

(b)the references in section 47 to the United Kingdom include the European Union.

Reputation of a comparable trade mark (IR)U.K.

10(1)Sections 5 and 10 apply in relation to a comparable trade mark (IR), subject to the modifications set out below.

(2)Where the reputation of a comparable trade mark (IR) falls to be considered in respect of any time before IP completion day, references in sections 5(3) and 10(3) to—

(a)the reputation of the mark are to be treated as references to the reputation of the corresponding (IR); and

(b)the United Kingdom include the European Union.

Rights conferred by registered trade markU.K.

11Section 9 applies in relation to a comparable trade mark (IR) but as if—

(a)the words in brackets in subsection (3) referring to section 40(3) were replaced with a reference to paragraph 1(6) of this Schedule; and

(b)the proviso in subsection (3) were omitted.

Effect of disclaimerU.K.

12Where, immediately before IP completion day, the protection in the European Union of an existing IR(EU) is subject to a disclaimer recorded in the International Register, the registration of the comparable trade mark (IR) which derives from the existing IR(EU) is to be treated on and after IP completion day as subject to the same disclaimer (and section 13 applies accordingly but as if the reference to “publication” in subsection (2) was omitted).

Effect of claim of priorityU.K.

13(1)This paragraph applies where—

(a)a right of priority was claimed in respect of an international application for protection of a trade mark in accordance with Rule 9(4)(iv);

(b)immediately before IP completion day there is an entry in the International Register in respect of that trade mark containing particulars of that claim of priority (a “claim of priority”);

(c)the trade mark is an existing IR(EU).

(2)Subject to sub-paragraph (4), the proprietor of the comparable trade mark (IR) which derives from the existing IR(EU) is to be treated on and after IP completion day as having the same claim of priority.

(3)Accordingly, the relevant date for the purposes of establishing, in relation to the comparable trade mark (IR), which rights take precedence is the date of filing of the application for a trade mark in a Convention country which formed the basis for the claim of priority.

(4)Where the protection in the European Union of the existing IR(EU) resulted from a request for territorial extension under Article 3ter(2), the proprietor of the comparable trade mark (IR) which derives from the existing IR(EU) is to be treated on and after IP completion day as having the same claim of priority only where the request for territorial extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application referred to in sub-paragraph (1)(a).

Effect of seniority claimU.K.

14(1)This paragraph applies where immediately before IP completion day an existing IR(EU) has a valid claim to seniority of a trade mark which trade mark (the “senior mark”) is a registered trade mark or a protected international trade mark (UK).

(2)The comparable trade mark (IR) which derives from the existing IR(EU) is to be treated on and after IP completion day as if it had a valid claim to seniority of the senior mark.

(3)Accordingly, where the proprietor of the comparable trade mark (IR) surrenders the senior mark or allows it to lapse (whether wholly or partially), subject to paragraph 15, the proprietor of the comparable trade mark (IR) is deemed to continue to have the same rights as the proprietor would have had if the senior mark had continued to be registered in respect of all the goods or services for which it was registered prior to the surrender or lapse.

(4)An existing IR(EU) has a valid claim to seniority of a trade mark where—

(a)a claim has been filed in accordance with Article 191 or 192 of the European Union Trade Mark Regulation in respect of the international registration to which the existing IR(EU) is subject; and

(b)the seniority so claimed has not lapsed in the circumstances referred to in Article 39 of that Regulation (as it applies to international registrations under Article 182 of that Regulation).

Determination of invalidity and liability to revocation in relation to claims of seniorityU.K.

15(1)Where pursuant to paragraph 14 a comparable trade mark (IR) is treated as if it had a valid claim to seniority of a registered trade mark which has been—

(a)removed from the register under section 43; or

(b)surrendered under section 45,

any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (2).

(2)The declaration is that if the trade mark had not been so removed or surrendered, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.

(3)Where the declaration is that had the trade mark not been so removed or surrendered the registration of it would have been liable to be—

(a)revoked under section 46 with effect from a date prior to—

(i)where there has been no claim of priority pursuant to Article 35 of the European Union Trade Mark Regulation (as it applies to international registrations under Article 182 of that Regulation) in respect of the existing IR(EU) from which the comparable trade mark (IR) derives, the deemed date of registration of the comparable trade mark (IR); or

(ii)where there has been a claim of priority, the priority date accorded pursuant to a right of priority claimed pursuant to Article 35 of the European Union Trade Mark Regulation in respect of the existing IR(EU) from which the comparable trade mark (IR) derives; or

(b)declared invalid under section 47,

the seniority claimed for the comparable trade mark (IR) is to be treated as if it never had effect.

(4)Where pursuant to paragraph 14 a comparable trade mark (IR) is treated as if it had a valid claim to seniority of a protected international trade mark (UK) which has been—

(a)removed from the International Register; or

(b)surrendered under the Madrid Protocol,

any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (5).

(5)The declaration is that, if the trade mark had not been so removed or surrendered, the protection of the mark in the United Kingdom would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.

(6)Where the declaration is that had the trade mark not been so removed or surrendered the protection of the mark in the United Kingdom would have been liable to be—

(a)revoked under section 46 with effect from a date prior to—

(i)where there has been no claim of priority pursuant to Article 35 of the European Union Trade Mark Regulation (as it applies to international registrations under Article 182 of that Regulation) in respect of the existing IR(EU) from which the comparable trade mark (IR) derives, the deemed date of registration of the comparable trade mark (IR); or

(ii)where there has been a claim of priority, the priority date accorded pursuant to a right of priority claimed pursuant to Article 35 of the European Union Trade Mark Regulation in respect of the existing IR(EU) from which the comparable trade mark (IR) derives; or

(b)declared invalid under section 47,

the seniority claimed for the comparable trade mark (IR) is to be treated as if it never had effect.

(7)Where the protection in the European Union of an existing IR(EU) resulted from a request for territorial extension under Article 3ter(2), a right of priority claimed pursuant to Article 35 of the European Union Trade Mark Regulation in respect of the existing IR(EU) is to be disregarded for the purposes of sub-paragraphs (3)(a)(ii) and (6)(a)(ii) unless the request for territorial extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the request for territorial extension was filed.

(8)References in sub-paragraphs (5) and (6) to sections 46 and 47 are to those sections as they apply to a protected international trade mark (UK) under an order made pursuant to section 54.

(9)Where a trade mark has been surrendered or allowed to lapse in respect of some only of the goods or services for which it is registered, the declaration in sub-paragraphs (2) and (5) is that if the goods or services had not been removed from the registration, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47 and sub-paragraphs (3) and (6) shall be construed accordingly.

Procedure for declaration that trade mark would have been liable to be revoked or declared invalidU.K.

16(1)In the case of proceedings on an application under paragraph 15 before the registrar, the rules relating to applications for and proceedings relating to the revocation or invalidation of a trade mark apply, with necessary modifications.

(2)In the case of proceedings on an application under paragraph 15 before the court, section 74 applies to the proceedings as it applies to proceedings involving an application of the type referred to in section 74(1)(a) to (c).

Assignment of an existing IR(EU) not registered on IP completion dayU.K.

17(1)This paragraph applies where before IP completion day an existing IR(EU) (or any right in it) is the subject of an assignment (a “relevant assignment”) which immediately before IP completion day is not recorded in the International Register.

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

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

(a)a person claiming to be entitled to an interest in or under a comparable trade mark (IR) by virtue of a relevant assignment of the corresponding (IR); or

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

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

18(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.

Effect of a security interest in an existing IR(EU)U.K.

19(1)This paragraph applies where immediately before IP completion day an existing IR(EU) (or any right in or under it) is the subject of a security interest (a “relevant security interest”) which—

(a)restricts the proprietor's right to dispose in the European Union of the existing IR(EU); and

(b)does not terminate on IP completion day.

(2)References to the existing IR(EU), or the international registration to which the existing IR(EU) is subject, in any document which grants or refers to the relevant security interest are to be read as including references to the comparable trade mark (IR) which derives from the existing IR(EU).

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

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

(a)a person claiming to be entitled to an interest in or under a comparable trade mark (IR) by virtue of the relevant security interest; or

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

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

(a)section 25(3) and (4) do 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.

(6)In sub-paragraph (5)(a), the “relevant period” means the period of twelve months beginning with the day after that on which IP completion day falls.

Continuity of rights in relation to a comparable trade mark (IR)U.K.

20(1)References to an existing IR(EU), or the international registration to which an existing IR(EU) is subject, in any document made before IP completion day shall, unless there is evidence that the document was not intended to have effect in the United Kingdom, be read on and after IP completion day as including references to the comparable trade mark (IR) or the registration of the comparable trade mark (IR) which derives from the existing IR(EU).

(2)Subject to any agreement to the contrary, a consent granted before IP completion day by the proprietor of an existing IR(EU) to the doing on or after IP completion day of an act in the United Kingdom which would otherwise infringe the comparable trade mark (IR) which derives from the existing IR(EU) is to be treated for the purposes of section 9 as a consent to the doing of that act.

Existing IR(EU): pending proceedingsU.K.

21(1)This paragraph applies where on IP completion day an existing IR(EU) is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 123 of the European Union Trade Mark Regulation (“EU trade mark court”).

(2)Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Chapter 10 of the European Union Trade Mark Regulation (with the exception of Articles 128(2), (4), (6) and (7) and 132) continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from IP completion day.

(3)Where the pending proceedings involve a claim for infringement of an existing IR(EU), without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the existing IR(EU), the EU trade mark court may grant an injunction to prohibit unauthorised use of the comparable trade mark (IR) which derives from the existing IR(EU).

(4)Where the pending proceedings involve a counterclaim for the revocation of, or a declaration of invalidity in relation to, an existing IR(EU), the EU trade mark court may revoke the registration of the comparable trade mark (IR) which derives from the existing IR(EU) or declare the registration of the comparable trade mark (IR) which derives from the existing IR(EU) to be invalid.

(5)Where the grounds for revocation or invalidity exist in respect of only some of the goods or services for which the existing IR(EU) is registered, the revocation or declaration of invalidity in respect of the registration of the comparable trade mark (IR) which derives from the existing IR(EU) relates to those goods or services only.

(6)Where (by virtue of sub-paragraph (4)) the registration of a comparable trade mark (IR) is revoked to any extent, the rights of the proprietor are deemed to have ceased to that extent as from—

(a)the date of the counterclaim for revocation, or

(b)if the court is satisfied that the grounds for revocation existed at an earlier date, that date.

(7)Where (by virtue of sub-paragraph (4)) the registration of a comparable trade mark (IR) is declared invalid to any extent, the registration is to that extent to be deemed never to have been made, provided that this does not affect transactions past and closed.

(8)For the purposes of this paragraph proceedings are treated as pending on IP completion day if they were instituted but not finally determined before IP completion day.

Existing IR(EU): effect of injunctionU.K.

22(1)This paragraph applies where immediately before IP completion day an injunction is in force prohibiting the performance of acts in the United Kingdom which infringe or would infringe an existing IR(EU) (a “relevant injunction”).

(2)Subject to any order of the court to the contrary, a relevant injunction will have effect and be enforceable to prohibit the performance of acts which infringe or would infringe a comparable trade mark (IR) to the same extent as in relation to the existing IR(EU) from which the comparable trade mark (IR) derives as if it were an injunction granted by the court.

PART 2U.K.Treatment of international trade marks protected in the European Union which expire during the period of six months ending on IP completion day

Registration of certain expired international trade marksU.K.

23(1)This Part applies to an international trade mark which, immediately before the transitional period, was protected in the European Union in accordance with Article 189(2) of the European Union Trade Mark Regulation but which, as a result of the expiry of the registration of the international trade mark during the transitional period, does not fall within paragraph 1(1) (an “expired IR(EU)”).

(2)Where the international registration to which an international trade mark is subject has been sub-divided as referred to in paragraph 1(2), there is to be deemed for the purposes of sub-paragraph (1) to be a separate expired trade mark in respect of the goods or services covered by each sub-division of the registration.

(3)An expired IR(EU) is to be treated as if it were an existing IR(EU).

(4)The provisions of Part 1 of this Schedule apply to an expired IR(EU) as they apply to an existing IR(EU) subject to the provisions of this Part of the Schedule.

(5)Notwithstanding the entry in the register (under paragraph 3, as applied by sub-paragraph (4)) of a comparable trade mark (IR) which derives from an expired IR(EU), the registration of the comparable trade mark (IR) is expired until the proprietor gives notice to the registrar in accordance with paragraph 24(1)(b) (or the comparable trade mark (IR) is removed from the register in accordance with paragraph 24(2)).

(6)In this paragraph, “transitional period” means the period of six months ending with IP completion day.

Renewal of an expired IR(EU)U.K.

24(1)Where within the period beginning with IP completion day and ending with the end of the relevant period—

(a)the international registration to which an expired IR(EU) is subject is renewed in accordance with Article 7; and

(b)the proprietor of the expired IR(EU) notifies the registrar of such renewal (a “renewal notice”),

paragraphs 25 and 26 apply to the renewal of the registration of the comparable trade mark (IR) which derives from the expired IR(EU).

(2)If within the period referred to in sub-paragraph (1) the proprietor fails to notify the registrar in accordance with sub-paragraph (1)(b)—

(a)the registrar must remove from the register the comparable trade mark (IR) which derives from the expired IR(EU); and

(b)the comparable trade mark (IR) ceases with effect from IP completion day to be treated as if it had been registered under this Act.

(3)In sub-paragraph (1), the “relevant period” means the period of nine months beginning with the day after that on which IP completion day falls.

Renewal of an expired IR(EU): territorial extension under Article 3ter(1)U.K.

25(1)Where the protection in the European Union of an expired IR(EU) resulted from a request for territorial extension under Article 3ter(1), the registrar must, as soon as reasonably practicable following receipt of the renewal notice, renew the registration of the comparable trade mark (IR) which derives from the expired IR(EU).

(2)A comparable trade mark (IR) which is renewed under sub-paragraph (1) shall be renewed for a period of ten years from the expiry of the international registration to which the expired IR(EU) is subject.

(3)Section 43(6) applies to the registration of a comparable trade mark (IR) which is renewed in accordance with this paragraph.

Renewal of an expired IR(EU): territorial extension under Article 3ter(2)U.K.

26(1)This paragraph applies where the protection in the European Union of an expired IR(EU) resulted from a request for territorial extension under Article 3ter(2).

(2)The relevant date for the purposes of determining the date of renewal of the registration of the comparable trade mark (IR) which derives from the expired IR(EU) (the “relevant renewal date”) shall be—

(a)the date of expiry of the period of ten years from the date on which the request for territorial extension was recorded in the International Register; or

(b)where the international registration to which the expired IR(EU) is subject has been renewed since the date referred to in paragraph (a), the anniversary of that date, computed by reference to periods of ten years, following the last renewal of the registration prior to the date of the renewal notice (the “notice date”).

(3)Where the relevant renewal date of a comparable trade mark (IR) falls prior to the notice date, the registrar must, as soon as reasonably practicable following receipt of a renewal notice, renew the registration of the comparable trade mark (IR) which derives from the expired IR(EU).

(4)Where the relevant renewal date of a comparable trade mark (IR) falls before the expiry of the period of six months beginning with the notice date, sub-paragraphs (5) and (6) apply (and accordingly section 43(1) to (3A) does not apply).

(5)The registration of the comparable trade mark (IR) may be renewed at the request of the proprietor before the relevant renewal date.

(6)Where the registration of the comparable trade mark (IR) is not renewed in accordance with sub-paragraph (5)—

(a)on, or as soon as reasonably practicable after, the relevant renewal date, the registrar must notify the proprietor that the registration of the comparable trade mark (IR) has expired and of the manner in which registration may be renewed; and

(b)a request for renewal must be made within a period of six months beginning with the date of the notice.

(7)If a request for renewal is made in respect of only some of the goods or services for which the comparable trade mark (IR) is registered, the registration is to be renewed for those goods or services only.

(8)A comparable trade mark (IR) which is renewed under sub-paragraph (3) or pursuant to a request for renewal in accordance with sub-paragraph (5) or (6) shall be renewed for a period of ten years from the relevant renewal date (and accordingly, section 43(4) does not apply).

(9)Where sub-paragraphs (5) and (6) apply to the renewal of the registration of a comparable trade mark (IR) and the registration is not renewed in accordance with those provisions, the registrar must remove the comparable trade mark (IR) from the register.

(10)Section 43(6) applies to the registration of a comparable trade mark (IR) which is renewed in accordance with this paragraph.

(11)Where a comparable trade mark (IR) is removed from the register pursuant to sub-paragraph (9), the rules relating to the restoration of the registration of a trade mark (referred to in section 43(5)) apply in relation to the restoration of the comparable trade mark (IR) to the register.

(12)Where the relevant renewal date of a comparable trade mark (IR) falls on or after the expiry of the period of six months beginning with the notice date, section 43 applies to the renewal of the registration of the comparable trade mark (IR) and references to the expiry of the registration are to be treated as references to the relevant renewal date of the comparable trade mark (IR).

PART 3U.K.Applications for the extension of protection of international registrations to the European Union which are pending on IP completion day

InterpretationU.K.

27(1)In this Part—

(a)references to an “existing ITM application” are to an international application which contains a request for extension of the protection resulting from an international registration to the European Union under Article 3ter(1) in respect of which the conditions in sub-paragraph (2) are satisfied;

(b)references to an “existing request for EU extension” are to a request for extension to the European Union of the protection resulting from an international registration made subsequent to the international registration pursuant to Article 3ter(2) in respect of which the conditions in sub-paragraph (3) are satisfied;

(c)references to an “international application” are to an application to the International Bureau under Article 2(2) for the registration of a trade mark in the International Register.

(2)The conditions referred to in sub-paragraph (1)(a) are—

(a)the international application was filed before IP completion day with the Office of origin in accordance with Article 2(2); and

(b)as at the time immediately before IP completion day, the request for extension of protection to the European Union mentioned in the international application has been neither granted nor refused by the European Union Intellectual Property Office.

(3)The conditions referred to in sub-paragraph (1)(b) are—

(a)the request for extension of protection to the European Union was filed before IP completion day with the Office of origin or the International Bureau (as the case may be) in accordance with Rule 24(2); and

(b)as at the time immediately before IP completion day, the request for extension of protection to the European Union has been neither granted nor refused by the European Union Intellectual Property Office under the European Union Trade Mark Regulation.

(4)In sub-paragraphs (2)(b) and (3)(b) —

(a)the reference to the request for extension of protection to the European Union being “granted” means the European Union Intellectual Property Office having sent to the International Bureau a statement to the effect that protection is granted to the mark in the European Union in accordance with Rule 18ter; and

(b)the reference to the request for extension of protection to the European Union being “refused” means the European Union Intellectual Property Office having sent to the International Bureau a notification of refusal in accordance with Article 5(1) or (2) which refusal has not been subsequently `withdrawn.

Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register prior to IP completion dayU.K.

28(1)This paragraph applies where—

(a)either—

(i)an existing ITM application has been filed with the International Bureau in respect of a trade mark and the date accorded to the international registration of the trade mark pursuant to Article 3(4) is a date prior to IP completion day; or

(ii)an existing request for EU extension in respect of a trade mark has been filed with the International Bureau and the date on which it was recorded in the International Register pursuant to Article 3ter(2) is a date prior to IP completion day;

(b)the person who filed the existing ITM application or (as the case may be) the existing request for EU extension, or a successor in title of that person, applies for registration of the same trade mark under this Act for some or all of the same goods or services, and

(c)the application under this Act is made within a period beginning with IP completion day and ending with the end of the period referred to in sub-paragraph (4).

(2)Where this paragraph applies, the relevant date for the purposes of establishing which rights take precedence is the earliest of—

(a)the date accorded to the international trade mark the subject of the existing ITM application pursuant to Article 3(4) or, in the case of an existing request for EU extension, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);

(b)the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention in respect of the existing ITM application or the existing request for EU extension (as the case may be).

(3)The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1)(b) and made within the period mentioned in sub-paragraph (1)(c) shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in sub-paragraph (2) and the date of the application under this Act.

(4)In sub-paragraph (1)(c), the period referred to is the period of nine months beginning with the day after that on which IP completion day falls.

(5)A right of priority claimed pursuant to Article 4 of the Paris Convention in respect of an existing request for EU extension is to be disregarded for the purposes of sub-paragraph (2)(b) unless the existing request for EU extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the existing request for EU extension was filed.

Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register on or after IP completion dayU.K.

29(1)This paragraph applies where—

(a)either—

(i)an existing ITM application has been filed with the International Bureau in respect of a trade mark and the date accorded to the international registration of the trade mark pursuant to Article 3(4) is a date on or after IP completion day; or

(ii)an existing request for EU extension in respect of a trade mark has been filed with the International Bureau and the date on which it was recorded in the International Register pursuant to Article 3ter(2) is a date on or after IP completion day;

(b)the person who filed the existing ITM application or (as the case may be) the existing request for EU extension, or a successor in title of that person, applies for registration of the same trade mark under this Act for some or all of the same goods or services; and

(c)the application under this Act is made within the period of nine months beginning with the date referred to in sub-paragraph (a)(i) or (ii) (as the case may be).

(2)Where this paragraph applies, the relevant date for the purposes of establishing which rights take precedence is the earliest of—

(a)the date accorded to the international trade mark the subject of the existing ITM application pursuant to Article 3(4) or, in the case of an existing request for EU extension, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);

(b)the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention in respect of the existing ITM application or the existing request for EU extension (as the case may be).

(3)The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1)(b) and made within the period mentioned in sub-paragraph (1)(c) shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in sub-paragraph (2) and the date of the application under this Act.

(4)A right of priority claimed pursuant to Article 4 of the Paris Convention in respect of an existing request for EU extension is to be disregarded for the purposes of sub-paragraph (2)(b) unless the existing request for EU extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the existing request for EU extension was filed.

Right to claim seniority where seniority has been claimed by an existing ITM application or an existing request for EU extensionU.K.

30(1)Where an existing ITM application or an existing request for EU extension claims seniority of a trade mark which trade mark (“the senior mark”) is a registered trade mark or a protected international trade mark (UK), the applicant may claim seniority of the senior mark in an application for registration of a trade mark (a “relevant mark”) pursuant to this Part.

(2)The effect of a seniority claim made pursuant to sub-paragraph (1) is that where following the registration of the relevant mark the proprietor of that mark surrenders the senior mark or allows it to lapse (wholly or partially), subject to paragraph 31, the proprietor of the relevant mark is deemed to continue to have the same rights as the proprietor would have had if the senior mark had continued to be registered in respect of all the goods or services for which it was registered prior to the surrender or lapse.

(3)Provision may be made by rules as to the manner of claiming seniority pursuant to this paragraph.

(4)In sub-paragraph (1), an application for registration of a trade mark “pursuant to this Part” means an application that is of the type mentioned in paragraph 28(1)(b) or 29(1)(b) and that is made within the period mentioned in paragraph 28(1)(c) or 29(1)(c) (as the case may be).

Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 30U.K.

31(1)Where a relevant mark has claimed seniority of a registered trade mark which has been—

(a)removed from the register under section 43; or

(b)surrendered under section 45,

any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (2).

(2)The declaration is that, if the trade mark had not been so removed or surrendered, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.

(3)Where the declaration is that had the trade mark not been so removed or surrendered, the registration of it would have been liable to be—

(a)revoked under section 46 with effect from a date prior to—

(i)where the application for registration of the relevant mark was based on an existing ITM application and there has been no claim of priority, the date of registration accorded pursuant to Article 3(4) to the international trade mark the subject of the existing ITM application;

(ii)where the application for registration of the relevant mark was based on an existing request for EU extension and there has been no claim of priority, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);

(iii)where the application for registration of the relevant mark was based on an existing ITM application or an existing request for EU extension and there has been a claim of priority, the priority date accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention; or

(b)declared invalid under section 47,

the seniority claimed for the relevant mark is to be treated as if it never had effect.

(4)Where a relevant mark has claimed seniority of a protected international trade mark (UK) which has been—

(a)removed from the International Register; or

(b)surrendered under the Madrid Protocol,

any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (5).

(5)The declaration is that, if the trade mark had not been so removed or surrendered, the protection of the trade mark in the United Kingdom would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.

(6)Where the declaration is that had the trade mark not been so removed or surrendered, the registration of it would have been liable to be—

(a)revoked under section 46 with effect from a date prior to—

(i)where the application for registration of the relevant mark was based on an existing ITM application and there has been no claim of priority, the date of registration accorded pursuant to Article 3(4) to the international trade mark the subject of the existing ITM application;

(ii)where the application for registration of the relevant mark was based on an existing request for EU extension and there has been no claim of priority, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);

(iii)where the application for registration of the relevant mark was based on an existing ITM application or an existing request for EU extension and there has been a claim of priority, the priority date accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention; or

(b)declared invalid under section 47,

the seniority claimed for the relevant mark is to be treated as if it never had effect.

(7)Where the application for registration of the relevant mark was based on an existing request for EU extension a right of priority claimed pursuant to Article 35 of the European Union Trade Mark Regulation in respect of the request for EU extension is to be disregarded for the purposes of sub-paragraphs (3)(a)(iii) and (6)(a)(iii) unless the request for territorial extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the request for EU extension was filed.

(8)References in sub-paragraphs (5) and (6) to sections 46 and 47 are to those sections as they apply to a protected international trade mark (UK) under an order made pursuant to section 54.

(9)Where a trade mark has been surrendered or allowed to lapse in respect of only some of the goods or services for which it is registered, the declaration in sub-paragraphs (2) and (5) is that if the goods or services had not been removed from the registration, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47 and sub-paragraphs (3) and (6) shall be construed accordingly.

(10)The provisions of paragraph 16 apply in relation to an application under this paragraph as they apply to an application under paragraph 15.

PART 4U.K.Transformation applications which are pending on IP completion day

Transformation applicationsU.K.

32(1)In this Part, references to a “transformation application” are to an application for transformation of an international registration which has been cancelled (a “cancelled international registration”) into an application for registration of a European Union trade mark filed under Article 204 of the European Union Trade Mark Regulation in respect of which the conditions in sub-paragraph (2) are satisfied.

(2)The conditions referred to in sub-paragraph (1) are—

(a)the transformation application was filed before IP completion day with the European Union Intellectual Property Office;

(b)as at the time immediately before IP completion day the transformation application has neither been granted nor refused by the European Union Intellectual Property Office under the European Union Trade Mark Regulation; and

(c)the international registration was not cancelled at the request of the Patent Office as Office of origin for the international registration of the trade mark.

(3)In sub-paragraph (2)(b)—

(a)the reference to the transformation application being “granted” means a European Union trade mark being registered under the European Union Trade Mark Regulation pursuant to the transformation application; and

(b)the reference to the transformation application being “refused” means the transformation application being subject to the provisions in Article 204(5) of the European Union Trade Mark Regulation.

Application for registration based upon a cancelled international registrationU.K.

33(1)This paragraph applies where—

(a)a person who has filed a transformation application in respect of a cancelled international registration, or a successor in title of that person, applies for registration under this Act of a trade mark which is the same as the trade mark which was the subject of the cancelled international registration and in respect of some or all of the same goods or services included in the international registration;

(b)the application for registration under this Act is made within the period beginning with IP completion day and ending with the end of the relevant period; and

(c)on or before the date of the transformation application on which the application for registration under this Act is based the trade mark that was the subject of the cancelled international registration—

(i)was protected in the European Union in accordance with Article 189(2) of the European Union Trade Mark Regulation; or

(ii)was the subject of an existing ITM application or an existing request for EU extension which, as at that date, had neither been granted nor refused by the European Union Intellectual Property Office (the references to “granted” and “refused” having the same meaning as given by paragraph 27(4)).

(2)Where this paragraph applies by virtue of sub-paragraph (1)(c)(i), the relevant date for the purposes of establishing which rights take precedence is the earliest of—

(a)where—

(i)the protection in the European Union of the trade mark that was the subject of the cancelled international registration resulted from a request for territorial extension under Article 3ter(1), the date of registration accorded to the international registration pursuant to Article 3(4); or

(ii)the protection in the European Union of the trade mark that was the subject of the cancelled international registration resulted from a request for territorial extension under Article 3ter(2), the date on which the request was recorded in the International Register; and

(b)the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention in respect of the request referred to in paragraph (a)(i) or (ii).

(3)Where this paragraph applies by virtue of sub-paragraph (1)(c)(ii), the relevant date for the purposes of establishing which rights take precedence is the earliest of—

(a)the date accorded to the trade mark that was the subject of the existing ITM application pursuant to Article 3(4) or, in the case of an existing request for EU extension, the date on which the request was recorded in the International Register pursuant to Article 3ter(2); and

(b)the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention in respect of the request referred to in paragraph (a).

(4)A right of priority claimed pursuant to Article 4 of the Paris Convention in respect of a request for territorial extension to the European Union made under Article 3ter(2) is to be disregarded for the purposes of sub-paragraphs (2)(b) and (3)(b) unless the request for extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the request for extension was filed.

(5)The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1)(a) and made within the period mentioned in sub-paragraph (1)(b) shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in sub-paragraph (2) or (3) (as the case may be) and the date of the application for registration of the trade mark under this Act.

(6)Paragraphs 30 and 31 apply in relation to an application for a trade mark under this Act of the type mentioned in sub-paragraph (1)(a) and made within the period mentioned in sub-paragraph (1)(b), as they apply in relation to an application for registration of a trade mark pursuant to Part 3, but as if—

(a)the references to an existing ITM application or an existing request for EU extension and an existing ITM application and an existing request for EU extension had the same meaning as they have in this paragraph; and

(b)the references to an existing ITM application included references to a “protected EU designation”.

(7)In this paragraph—

(a)an “existing ITM application” means an international application which contains a request for extension of the protection resulting from an international registration to the European Union under Article 3ter(1) which has been filed with the Office of origin in accordance with Article 2(2);

(b)an “existing request for EU extension” means a request for extension to the European Union of the protection resulting from an international registration made subsequent to the international registration pursuant to Article 3ter(2) which has been filed with the Office of origin or the International Bureau (as the case may be) in accordance with Rule 24(2);

(c)the “relevant period” means the period of nine months beginning with the day after that on which IP completion day falls;

(d)a “protected EU designation” means an international registration which prior to its cancellation was protected in the European Union in accordance with Article 189(2) of the European Union Trade Mark Regulation.

PART 5U.K.Interpretation

InterpretationU.K.

34(1)In this Schedule—

  • “comparable trade mark (IR)” has the meaning given by paragraph 1(4);

  • “the Common Regulations” means the Common Regulations under the Madrid Agreement concerning the international registration of marks and the Madrid Protocol in force on 1st November 2017;

  • “corresponding (IR)” has the meaning given by paragraph 3(4);

  • “existing IR(EU)” has the meaning given by paragraph 1(1);

  • “expired IR(EU)” has the meaning given by paragraph 23(1);

  • “international application” has the meaning given by paragraph 27(1)(c);

  • “the International Register” has the meaning given by paragraph 1(11)(a);

  • “international registration” has the meaning given by paragraph 1(11)(b);

  • “international trade mark” has the meaning given by paragraph 1(11)(c);

  • “Office of origin” has the meaning given by Article 2(2);

  • “the previous EUTM Regulations” means Council Regulation (EC) No 207/2009 of 26th February 2009 on the European Union trade mark and Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade mark;

  • “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008;

(2)References in this Schedule to—

(a)an “Article” are to an Article of the Madrid Protocol;

(b)an Article of the European Union Trade mark Regulation include references to any equivalent Article contained in the previous EUTM Regulations;

(c)the European Union Trade Mark Regulation include references to the previous EUTM Regulations;

(d)an international trade mark include references to an international trade mark which is dealt with for the purposes of the European Union Trade Mark Regulation as an EU collective mark or an EU certification mark;

(e)a “Rule” are to a Rule of the Common Regulations.

(3)In this Schedule, references to a request for territorial extension, in relation to an existing IR(EU) which is the subject of a separate international registration within the meaning of paragraph 1(3), are to the request made before the separate international registration was created.]

Section 105.

SCHEDULE 3U.K. Transitional provisions

Commencement Information

I32Sch. 3 wholly in force at 31.10.1994; Sch. 3 not in force at Royal Assent see s. 109; Sch. 3 paras. 10(2), 11(2), 12, 14(5) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as Sch. 3 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

IntroductoryU.K.

1(1)In this Schedule—U.K.

  • “existing registered mark” means a trade mark, certification trade mark or service mark registered under the 1938 Act immediately before the commencement of this Act;

  • “the 1938 Act” means the M15Trade Marks Act 1938; and

  • “the old law” means that Act and any other enactment or rule of law applying to existing registered marks immediately before the commencement of this Act.

(2)For the purposes of this Schedule—

(a)an application shall be treated as pending on the commencement of this Act if it was made but not finally determined before commencement, and

(b)the date on which it was made shall be taken to be the date of filing under the 1938 Act.

Marginal Citations

Existing registered marksU.K.

2(1)Existing registered marks (whether registered in Part A or B of the register kept under the 1938 Act) shall be transferred on the commencement of this Act to the register kept under this Act and have effect, subject to the provisions of this Schedule, as if registered under this Act.U.K.

(2)Existing registered marks registered as a series under section 21(2) of the 1938 Act shall be similarly registered in the new register.

Provision may be made by rules for putting such entries in the same form as is required for entries under this Act.

(3)In any other case notes indicating that existing registered marks are associated with other marks shall cease to have effect on the commencement of this Act.

Prospective

3(1)A condition entered on the former register in relation to an existing registered mark immediately before the commencement of this Act shall cease to have effect on commencement.U.K.

Proceedings under section 33 of the 1938 Act (application to expunge or vary registration for breach of condition) which are pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration made to the new register.

(2)A disclaimer or limitation entered on the former register in relation to an existing registered mark immediately before the commencement of this Act shall be transferred to the new register and have effect as if entered on the register in pursuance of section 13 of this Act.

Effects of registration: infringementU.K.

4(1)Sections 9 to 12 of this Act (effects of registration) apply in relation to an existing registered mark as from the commencement of this Act and section 14 of this Act (action for infringement) applies in relation to infringement of an existing registered mark committed after the commencement of this Act, subject to sub-paragraph (2) below.U.K.

The old law continues to apply in relation to infringements committed before commencement.

(2)It is not an infringement of—

(a)an existing registered mark, or

(b)a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,

to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.

Infringing goods, material or articlesU.K.

5U.K.Section 16 of this Act (order for delivery up of infringing goods, material or articles) applies to infringing goods, material or articles whether made before or after the commencement of this Act.

Rights and remedies of licensee or authorised userU.K.

6(1)Section 30 (general provisions as to rights of licensees in case of infringement) of this Act applies to licences granted before the commencement of this Act, but only in relation to infringements committed after commencement.U.K.

(2)Paragraph 14 of Schedule 2 of this Act (court to take into account loss suffered by authorised users, &c.) applies only in relation to infringements committed after commencement.

Co-ownership of registered markU.K.

7U.K.The provisions of section 23 of this Act (co-ownership of registered mark) apply as from the commencement of this Act to an existing registered mark of which two or more persons were immediately before commencement registered as joint proprietors.

But so long as the relations between the joint proprietors remain such as are described in section 63 of the 1938 Act (joint ownership) there shall be taken to be an agreement to exclude the operation of subsections (1) and (3) of section 23 of this Act (ownership in undivided shares and right of co-proprietor to make separate use of the mark).

Assignment, &c. of registered markU.K.

8(1)Section 24 of this Act (assignment or other transmission of registered mark) applies to transactions and events occurring after the commencement of this Act in relation to an existing registered mark; and the old law continues to apply in relation to transactions and events occurring before commencement.U.K.

(2)Existing entries under section 25 of the 1938 Act (registration of assignments and transmissions) shall be transferred on the commencement of this Act to the register kept under this Act and have effect as if made under section 25 of this Act.

Provision may be made by rules for putting such entries in the same form as is required for entries made under this Act.

(3)An application for registration under section 25 of the 1938 Act which is pending before the registrar on the commencement of this Act shall be treated as an application for registration under section 25 of this Act and shall proceed accordingly.

The registrar may require the applicant to amend his application so as to conform with the requirements of this Act.

(4)An application for registration under section 25 of the 1938 Act which has been determined by the registrar but not finally determined before the commencement of this Act shall be dealt with under the old law; and sub-paragraph (2) above shall apply in relation to any resulting entry in the register.

(5)Where before the commencement of this Act a person has become entitled by assignment or transmission to an existing registered mark but has not registered his title, any application for registration after commencement shall be made under section 25 of this Act.

(6)In cases to which sub-paragraph (3) or (5) applies section 25(3) of the 1938 Act continues to apply (and section 25(3) and (4) of this Act do not apply) as regards the consequences of failing to register.

Licensing of registered markU.K.

9(1)Sections 28 and 29(2) of this Act (licensing of registered trade mark; rights of exclusive licensee against grantor’s successor in title) apply only in relation to licences granted after the commencement of this Act; and the old law continues to apply in relation to licences granted before commencement.U.K.

(2)Existing entries under section 28 of the 1938 Act (registered users) shall be transferred on the commencement of this Act to the register kept under this Act and have effect as if made under section 25 of this Act.

Provision may be made by rules for putting such entries in the same form as is required for entries made under this Act.

(3)An application for registration as a registered user which is pending before the registrar on the commencement of this Act shall be treated as an application for registration of a licence under section 25(1) of this Act and shall proceed accordingly.

The registrar may require the applicant to amend his application so as to conform with the requirements of this Act.

(4)An application for registration as a registered user which has been determined by the registrar but not finally determined before the commencement of this Act shall be dealt with under the old law; and sub-paragraph (2) above shall apply in relation to any resulting entry in the register.

(5)Any proceedings pending on the commencement of this Act under section 28(8) or (10) of the 1938 Act (variation or cancellation of registration of registered user) shall be dealt with under the old law and any necessary alteration made to the new register.

Pending applications for registrationU.K.

10(1)An application for registration of a mark under the 1938 Act which is pending on the commencement of this Act shall be dealt with under the old law, subject as mentioned below, and if registered the mark shall be treated for the purposes of this Schedule as an existing registered mark.U.K.

(2)The power of the Secretary of State under section 78 of this Act to make rules regulating practice and procedure, and as to the matters mentioned in subsection (2) of that section, is exercisable in relation to such an application; and different provision may be made for such applications from that made for other applications.

(3)Section 23 of the 1938 Act (provisions as to associated trade marks) shall be disregarded in dealing after the commencement of this Act with an application for registration.

Commencement Information

I33Sch. 3 para. 10 wholly in force; Sch. 3 para. 10 not in force at Royal Assent see s. 109; Sch. 3 para. 10(2) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

Conversion of pending applicationU.K.

11(1)In the case of a pending application for registration which has not been advertised under section 18 of the 1938 Act before the commencement of this Act, the applicant may give notice to the registrar claiming to have the registrability of the mark determined in accordance with the provisions of this Act.U.K.

(2)The notice must be in the prescribed form, be accompanied by the appropriate fee and be given no later than six months after the commencement of this Act.

(3)Notice duly given is irrevocable and has the effect that the application shall be treated as if made immediately after the commencement of this Act.

Commencement Information

I34Sch. 3 para. 11 wholly in force; Sch. 3 para. 11 not in force at Royal Assent see s. 109; Sch. 3 para. 11 in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

Trade marks registered according to old classificationU.K.

12U.K.The registrar may exercise the powers conferred by rules under section 65 of this Act (adaptation of entries to new classification) to secure that any existing registered marks which do not conform to the system of classification prescribed under section 34 of this Act are brought into conformity with that system.

This applies, in particular, to existing registered marks classified according to the pre-1938 classification set out in Schedule 3 to the M16Trade Marks Rules 1986.

Commencement Information

I35Sch. 3 para. 12 wholly in force; Sch. 3 para. 12 not in force at Royal Assent see s. 109; Sch. 3 para. 12 in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

Marginal Citations

Claim to priority from overseas applicationU.K.

13U.K.Section 35 of this Act (claim to priority of Convention application) applies to an application for registration under this Act made after the commencement of this Act notwithstanding that the Convention application was made before commencement.

14(1)Where before the commencement of this Act a person has duly filed an application for protection of a trade mark in a relevant country within the meaning of section 39A of the 1938 Act which is not a Convention country (a “relevant overseas application”), he, or his successor in title, has a right to priority, for the purposes of registering the same trade mark under this Act for some or all of the same goods or services, for a period of six months from the date of filing of the relevant overseas application.U.K.

(2)If the application for registration under this Act is made within that six-month period—

(a)the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the relevant overseas application, and

(b)the registrability of the trade mark shall not be affected by any use of the mark in the United Kingdom in the period between that date and the date of the application under this Act.

(3)Any filing which in a relevant country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority.

A “regular national filing” means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent fate of the application.

(4)A subsequent application concerning the same subject as the relevant overseas application, filed in the same country, shall be considered the relevant overseas application (of which the filing date is the starting date of the period of priority), if at the time of the subsequent application—

(a)the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding, and

(b)it has not yet served as a basis for claiming a right of priority.

The previous application may not thereafter serve as a basis for claiming a right of priority.

(5)Provision may be made by rules as to the manner of claiming a right to priority on the basis of a relevant overseas application.

(6)A right to priority arising as a result of a relevant overseas application may be assigned or otherwise transmitted, either with the application or independently.

The reference in sub-paragraph (1) to the applicant’s “successor in title” shall be construed accordingly.

(7)Nothing in this paragraph affects proceedings on an application for registration under the 1938 Act made before the commencement of this Act (see paragraph 10 above).

Commencement Information

I36Sch. 3 wholly in force; Sch. 3 not in force at Royal Assent see s. 109; Sch. 3 para. 14(5) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.

Duration and renewal of registrationU.K.

15(1)Section 42(1) of this Act (duration of original period of registration) applies in relation to the registration of a mark in pursuance of an application made after the commencement of this Act; and the old law applies in any other case.U.K.

(2)Sections 42(2) and 43 of this Act (renewal) apply where the renewal falls due on or after the commencement of this Act; and the old law continues to apply in any other case.

(3)In either case it is immaterial when the fee is paid.

Pending application for alteration of registered markU.K.

Prospective

16U.K.An application under section 35 of the 1938 Act (alteration of registered trade mark) which is pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration made to the new register.

Revocation for non-useU.K.

17(1)An application under section 26 of the 1938 Act (removal from register or imposition of limitation on ground of non-use) which is pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration made to the new register.U.K.

(2)An application under section 46(1)(a) or (b) of this Act (revocation for non-use) may be made in relation to an existing registered mark at any time after the commencement of this Act.

Provided that no such application for the revocation of the registration of an existing registered mark registered by virtue of section 27 of the 1938 Act (defensive registration of well-known trade marks) may be made until more than five years after the commencement of this Act.

Application for rectification, &c.U.K.

18(1)An application under section 32 or 34 of the 1938 Act (rectification or correction of the register) which is pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration made to the new register.U.K.

(2)For the purposes of proceedings under section 47 of this Act (grounds for invalidity of registration) as it applies in relation to an existing registered mark, the provisions of this Act shall be deemed to have been in force at all material times.

Provided that no objection to the validity of the registration of an existing registered mark may be taken on the ground specified in subsection (3) of section 5 of this Act (relative grounds for refusal of registration: conflict with earlier mark registered for different goods or services).

Regulations as to use of certification markU.K.

19(1)Regulations governing the use of an existing registered certification mark deposited at the Patent Office in pursuance of section 37 of the 1938 Act shall be treated after the commencement of this Act as if filed under paragraph 6 of Schedule 2 to this Act.U.K.

(2)Any request for amendment of the regulations which was pending on the commencement of this Act shall be dealt with under the old law.

Sheffield marksU.K.

20(1)For the purposes of this Schedule the Sheffield register kept under Schedule 2 to the 1938 Act shall be treated as part of the register of trade marks kept under that Act.U.K.

(2)Applications made to the Cutlers’ Company in accordance with that Schedule which are pending on the commencement of this Act shall proceed after commencement as if they had been made to the registrar.

Certificate of validity of contested registrationU.K.

21U.K.A certificate given before the commencement of this Act under section 47 of the 1938 Act (certificate of validity of contested registration) shall have effect as if given under section 73(1) of this Act.

Trade mark agentsU.K.

22(1)Rules in force immediately before the commencement of this Act under section 282 or 283 of the M17Copyright, Designs and Patents Act 1988 (register of trade mark agents; persons entitled to described themselves as registered) shall continue in force and have effect as if made under section 83 or 85 of this Act.U.K.

(2)Rules in force immediately before the commencement of this Act under section 40 of the 1938 Act as to the persons whom the registrar may refuse to recognise as agents for the purposes of business under that Act shall continue in force and have effect as if made under section 88 of this Act.

(3)Rules continued in force under this paragraph may be varied or revoked by further rules made under the relevant provisions of this Act.

Marginal Citations

Section 106(1).

SCHEDULE 4U.K. Consequential amendments

General adaptation of existing referencesU.K.

1(1)References in statutory provisions passed or made before the commencement of this Act to trade marks or registered trade marks within the meaning of the M18Trade Marks Act 1938 shall, unless the context otherwise requires, be construed after the commencement of this Act as references to trade marks or registered trade marks within the meaning of this Act.U.K.

(2)Sub-paragraph (1) applies, in particular, to the references in the following provisions—

M19Industrial Organisation and Development Act 1947Schedule 1, paragraph 7
M20Crown Proceedings Act 1947section 3(1)(b)
F228. . .F228. . .
M21Printer’s Imprint Act 1961section 1(1)(b)
F229. . .F229. . .
F230. . .F230. . .
M22Patents Act 1977section 19(2)section 27(4)section 123(7)
M23Unfair Contract Terms Act 1977Schedule 1, paragraph 1(c)
M24Judicature (Northern Ireland) Act 1978section 94A(5)
M25State Immunity Act 1978section 7(a) and (b)
[F231Senior Courts Act 1981]section 72(5)Schedule 1, paragraph 1(i)
M26Civil Jurisdiction and Judgments Act 1982Schedule 5, paragraph 2Schedule 8, paragraph 2(14) and 4(2)
M27Value Added Tax Act 1983Schedule 3, paragraph 1
F232. . .F232. . .
M28Law Reform (Miscellaneous Provisions) (Scotland) Act 1985section 15(5)
M29Atomic Energy Authority Act 1986section 8(2)
F233. . .F233. . .
M30Consumer Protection Act 1987section 2(2)(b)
M31Consumer Protection (Northern Ireland) Order 1987article 5(2)(b)
M32Income and Corporation Taxes Act 1988section 83(a)
M33Taxation of Chargeable Gains Act 1992section 275(h)
M34Tribunals and Inquiries Act 1992Schedule 1, paragraph 34.

Textual Amendments

F228Words in Sch. 4 para. 1(2) repealed (22.7.2004) by Statute Law (Repeals) Act 2004 (c. 14), Sch. 1 Pt. 2 Group 1

F229Entry relating to “Plant Variety and Seeds Act”in Sch. 4 para. 1(2) repealed (8.5.1998) by 1997 c. 66, s. 52, Sch. 4; S.I. 1998/1028, art. 2

F230Entry relating to “Northern Ireland Constitution Act 1973” repealed (2.12.1999) by 1998 c. 47, s. 100(2), Sch. 15 (with s. 95)

F232Words in Sch. 4 para. 1(2) repealed (6.4.2008 for specified purposes, 1.10.2009 for specified purposes) by Companies Act 2006 (c. 46), s. 1300(2), Sch. 16; S.I. 2007/3495, art. 8(a), Sch. 2 Pt. 1 (with arts. 7, 12); S.I. 2008/2860, art. 4, Sch. 1 Pt. 1 (with arts. 7, 8, Sch. 2) (which transitional provisions in Sch. 2 are amended (1.10.2009) by S.I. 2009/2476, arts. 1(3), 2(3)(4) and by S.I. 2009/1802, arts. 1, 18, Sch.)

Marginal Citations

Patents and Designs Act 1907 (c.29)U.K.

2(1)The Patents and Designs Act 1907 is amended as follows.U.K.

(2)In section 62 (the Patent Office)—

(a)in subsection (1) for “this Act and the Trade Marks Act 1905” substitute “ the Patents Act 1977, the Registered Designs Act 1949 and the Trade Marks Act 1994 ”; and

(b)in subsections (2) and (3) for “the Board of Trade” substitute “ the Secretary of State ”.

(3)In section 63 (officers and clerks of the Patent Office)—

(a)for “the Board of Trade” in each place where it occurs substitute “ the Secretary of State ”; and

(b)in subsection (2) omit the words from “and those salaries” to the end.

(4)The repeal by the M35Patents Act 1949 and the M36Registered Designs Act 1949 of the whole of the 1907 Act, except certain provisions, shall be deemed not to have extended to the long title, date of enactment or enacting words or to so much of section 99 as provides the Act with its short title.

Marginal Citations

Patents, Designs, Copyright and Trade Marks (Emergency) Act 1939(c.107)U.K.

3(1)The Patents, Designs, Copyright and Trade Marks (Emergency) Act 1939 is amended as follows.U.K.

(2)For section 3 (power of comptroller to suspend rights of enemy or enemy subject) substitute—

“3 Power of comptroller to suspend trade mark rights of enemy or enemy subject.

(1)Where on application made by a person proposing to supply goods or services of any description it is made to appear to the comptroller—

(a)that it is difficult or impracticable to describe or refer to the goods or services without the use of a registered trade mark, and

(b)that the proprietor of the registered trade mark (whether alone or jointly with another) is an enemy or an enemy subject,

the comptroller may make an order suspending the rights given by the registered trade mark.

(2)An order under this section shall suspend those rights as regards the use of the trade mark—

(a)by the applicant, and

(b)by any person authorised by the applicant to do, for the purposes of or in connection with the supply by the applicant of the goods or services, things which would otherwise infringe the registered trade mark,

to such extent and for such period as the comptroller considers necessary to enable the applicant to render well-known and established some other means of describing or referring to the goods or services in question which does not involve the use of the trade mark.

(3)Where an order has been made under this section, no action for passing off lies on the part of any person interested in the registered trade mark in respect of any use of it which by virtue of the order is not an infringement of the right conferred by it.

(4)An order under this section may be varied or revoked by a subsequent order made by the comptroller.”.

(3)In each of the following provisions—

(a)section 4(1)(c) (effect of war on registration of trade marks),

(b)section 6(1) (power of comptroller to extend time limits),

(c)section 7(1)(a) (evidence as to nationality, &c.), and

(d)the definition of “the comptroller” in section 10(1) (interpretation),

for “the Trade Marks Act 1938” substitute “ the Trade Marks Act 1994 ”.

Trade Descriptions Act 1968 (c.29)U.K.

4U.K.In the Trade Descriptions Act 1968, in section 34 (exemption of trade description contained in pre-1968 trade mark)—

(a)in the opening words, omit “within the meaning of the Trade Marks Act 1938”; and

(b)in paragraph (c), for “a person registered under section 28 of the Trade Marks Act 1938 as a registered user of the trade mark” substitute “ , in the case of a registered trade mark, a person licensed to use it ”.

Solicitors Act 1974 (c.47)U.K.

F2345U.K.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

House of Commons Disqualification Act 1975 (c.24)U.K.

Prospective

6U.K.In Part III of Schedule 1 to the House of Commons Disqualification Act 1975 (other disqualifying offices), for the entry relating to persons appointed to hear and determine appeals under the Trade Marks Act 1938 substitute— “ Person appointed to hear and determine appeals under the Trade Marks Act 1994. ”

Restrictive Trade Practices Act 1976 (c.34)U.K.

7U.K.In Schedule 3 to the Restrictive Trade Practices Act 1976 (excepted agreements), for paragraph 4 (agreements relating to trade marks) substitute—

“4(1)This Act does not apply to an agreement authorising the use of a registered trade mark (other than a collective mark or certification mark) if no such restrictions as are described in section 6(1) or 11(2) above are accepted, and no such information provisions as are described in section 7(1) or 12(2) above are made, except in respect of—

(a)the descriptions of goods bearing the mark which are to be produced or supplied, or the processes of manufacture to be applied to such goods or to goods to which the mark is to be applied, or

(b)the kinds of services in relation to which the mark is to be used which are to be made available or supplied, or the form or manner in which such services are to be made available or supplied, or

(c)the descriptions of goods which are to be produced or supplied in connection with the supply of services in relation to which the mark is to be used, or the process of manufacture to be applied to such goods.

(2)This Act does not apply to an agreement authorising the use of a registered collective mark or certification mark if—

(a)the agreement is made in accordance with regulations approved by the registrar under Schedule 1 or 2 to the Trade Marks Act 1994, and

(b)no such restrictions as are described in section 6(1) or 11(2) above are accepted, and no such information provisions as are described in section 7(1) or 12(2) above are made, except as permitted by those regulations.”.

Copyright, Designs and Patents Act 1988 (c.48)U.K.

8(1)The Copyright, Designs and Patents Act 1988 is amended as follows.U.K.

(2)In sections 114(6), 204(6) and 231(6) (persons regarded as having an interest in infringing copies, &c.), for “section 58C of the Trade Marks Act 1938” substitute “ section 19 of the Trade Marks Act 1994 ”.

(3)In section 280(1) (privilege for communications with patent agents), for “trade mark or service mark” substitute “ or trade mark ”.

Tribunals and Inquiries Act 1992 (c.53)U.K.

9U.K.In Part I of Schedule 1 to the Tribunals and Inquiries Act 1992 (tribunals under direct supervision of Council on Tribunals), for “Patents, designs, trade marks and service marks” substitute “ Patents, designs and trade marks ”.

Section 106(2).

SCHEDULE 5U.K. Repeals and revocations

Chapter or numberShort titleExtent of repeal or revocation
1891 c. 50.Commissioners for Oaths Act 1891.In section 1, the words “or the Patents, Designs and Trade Marks Acts, 1883 to 1888,”.
1907 c. 29.Patents and Designs Act 1907.In section 63(2), the words from “and those salaries” to the end.
1938 c. 22.Trade Marks Act 1938.The whole Act.
1947 c. 44.Crown Proceedings Act 1947.In section 3(1)(b), the words “or registered service mark”.
1949 c. 87.Patents Act 1949.Section 92(2).
1964 c. 14.Plant Varieties and Seeds Act 1964.In section 5A(4), the words “under the Trade Marks Act 1938”.
1967 c. 80.Criminal Justice Act 1967.In Schedule 3, in Parts I and IV, the entries relating to the Trade Marks Act 1938.
1978 c. 23.Judicature (Northern Ireland) Act 1978.In Schedule 5, in Part II, the paragraphs amending the Trade Marks Act 1938.
1984 c. 19.Trade Marks (Amendment) Act 1984.The whole Act.
1985 c. 6.Companies Act 1985.In section 396—
(a) in subsection (3A)(a),
and
(b) in subsection (2)(d)(i) as inserted by the Companies Act 1989,
the words “service mark,”.
1986 c. 12.Statute Law (Repeals) Act 1986.In Schedule 2, paragraph 2.
1986 c. 39.Patents, Designs and Marks Act 1986.Section 2.
Section 4(4).
In Schedule 1, paragraphs 1 and 2.
Schedule 2.
S.I. 1986/1032 (N.I. 6).Companies (Northern Ireland) Order 1986.In article 403—
(a) in paragraph (3A)(a), and
(b) in paragraph (2)(d)(i) as inserted by the Companies (No.2) (Northern Ireland) Order 1990,the words “service mark,”.
1987 c. 43.Consumer Protection Act 1987.In section 45—
(a) in subsection (1), the definition of “mark” and “trade mark”;
(b) subsection (4).
S.I. 1987/2049.Consumer Protection (Northern Ireland) Order 1987.In article 2—
(a) in paragraph (2), the definitions of “mark” and “trade mark”;
(b) paragraph (3).
1988 c. 1.Income and Corporation Taxes Act 1988.In section 83, the words from “References in this section” to the end.
1988 c. 48.Copyright, Designs and Patents Act 1988.Sections 282 to 284.
In section 286, the definition of “registered trade mark agent”.
Section 300.
1992 c. 12.Taxation of Chargeable Gains Act 1992.In section 275(h), the words “service marks” and “service mark”.

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This timeline shows the different points in time where a change occurred. The dates will coincide with the earliest date on which the change (e.g an insertion, a repeal or a substitution) that was applied came into force. The first date in the timeline will usually be the earliest date when the provision came into force. In some cases the first date is 01/02/1991 (or for Northern Ireland legislation 01/01/2006). This date is our basedate. No versions before this date are available. For further information see the Editorial Practice Guide and Glossary under Help.

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More Resources

Use this menu to access essential accompanying documents and information for this legislation item. Dependent on the legislation item being viewed this may include:

  • the original print PDF of the as enacted version that was used for the print copy
  • correction slips

Click 'View More' or select 'More Resources' tab for additional information including:

  • lists of changes made by and/or affecting this legislation item
  • confers power and blanket amendment details
  • all formats of all associated documents
  • links to related legislation and further information resources

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