Trade Marks Act 1994

[F1 European Union] trade marks U.K.

Textual Amendments

F1 Words 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)

[F2 51. 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 Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union Trade Mark.]

Textual Amendments

F2 S. 51 substituted (6.4.2016) by The European Union Trade Mark Regulations 2016 (S.I. 2016/299), regs. 1(1), 4 (with reg. 13)

52 Power to make provision in connection with [F3 European Union] Trade Mark Regulation. U.K.

(1) The Secretary of State may by regulations make such provision as he considers appropriate in connection with the operation of the [F4 European Union] Trade Mark Regulation.

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

F5 (a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(b) the procedures for determininga posteriori the invalidity, or liability to revocation, of the registration of a trade mark from which a [F4 European Union] trade mark claims seniority;

(c) the conversion of a [F4 European Union] trade mark, or an application for a [F4 European Union] trade mark, into an application for registration under this Act;

(d) the designation of courts in the United Kingdom having jurisdiction over proceedings arising out of the [F4 European Union] Trade Mark Regulation.

(3) Without prejudice to the generality of subsection (1), provision may be made by regulations under this section—

(a) applying in relation to a [F4 European Union] trade mark the provisions of—

(i) section 21 (remedy for groundless threats of infringement proceedings);

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

(iii) sections 92, 93, 95 and 96 (offences); and

(b) making in relation to the list of professional representatives maintained in pursuance of [F6 Article 93] of the [F4 European Union] Trade Mark Regulation, and persons on that list, provision corresponding to that made by, or capable of being made under, sections 84 to 88 in relation to the register of [F7 trade mark attorneys and registered trade mark attorneys].

[F8 (3A) The reference in subsections (1) and (2)(d) to the European Union Trade Mark Regulation includes a reference to Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade mark . ]

(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.

Subordinate Legislation Made

P1 S. 52 power fully exercised (23.7.1996): 14.8.1996 appointed day by S.I. 1996/1908

Textual Amendments

F3 Words 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)

F4 Words in s. 52(1)-(3) substituted (6.4.2016) by The European Union Trade Mark Regulations 2016 (S.I. 2016/299), regs. 1(1), 5(3) (with regs. 13, 14)

F5 S. 52(2)(a) omitted (6.4.2016) by virtue of The European Union Trade Mark Regulations 2016 (S.I. 2016/299), regs. 1(1), 5(4) (with regs. 13, 14)

F6 Words in s. 52(3)(b) substituted (6.4.2016) by The European Union Trade Mark Regulations 2016 (S.I. 2016/299), regs. 1(1), 5(5) (with regs. 13, 14)

F7 Words in s. 52(3)(b) substituted (1.1.2010) by Legal Services Act 2007 (c. 29), s. 211(2), Sch. 21 para. 110 (with ss. 29, 192, 193); S.I. 2009/3250, art. 2(h)

F8 S. 52(3A) inserted (6.4.2016) by The European Union Trade Mark Regulations 2016 (S.I. 2016/299), regs. 1(1), 5(6) (with regs. 13, 14)