Trade Marks Act 1994

21 Remedy for groundless threats of infringement proceedings. U.K.

(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than—

(a) the application of the mark to goods or their packaging,

(b) the importation of goods to which, or to the packaging of which, the mark has been applied, or

(c) the supply of services under the mark,

any person aggrieved may bring proceedings for relief under this section.

(2) The relief which may be applied for is any of the following—

(a) a declaration that the threats are unjustifiable,

(b) an injunction against the continuance of the threats,

(c) damages in respect of any loss he has sustained by the threats;

and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.

(3) If that is shown by the defendant, the plaintiff is nevertheless entitled to relief if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.

(4) The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section.

Modifications etc. (not altering text)

C1 S. 21 applied (with modifications) by S.I. 1996/1908, reg. 4 (as substituted (1.11.2004) by Trade Marks (International Registrations Designating the European Community, etc.) Regulations 2004 (S.I. 2004/2332), regs. 1(3), 10)

C2 S. 21 applied (with modifications) (29.4.2006) by Community Trade Mark Regulations 2006 (S.I. 2006/1027), regs. 1(1), 6