The Trade Marks (International Registration) Order 1996

Effects of international registration where trade mark is also registered under the Act

21.—(1) The provisions of this article apply, without prejudice to the rights and remedies conferred in respect of a trade mark registered under the Act, where—

(a) the registered trade mark is also a protected international trade mark (UK);

(b) the proprietor of the registered trade mark is the holder of the international trade mark (UK);

(c) all the goods or services in respect of which the registered trade mark is registered are protected under the protected international trade mark (UK);

(d) the date of registration of the registered trade mark is earlier than the date specified in article 12(2) in relation to the international trade mark (UK).

(2) For the purposes of application by this Order of the provisions of the Act, the protected international trade mark (UK) shall be treated, notwithstanding the provisions of article 12(2), as being registered under the Act as of the date of registration of the registered trade mark as regards all the goods or services in respect of which the registered trade mark was registered.

(3) For the purpose of determining whether the international trade mark (UK) is an earlier trade mark, it shall be treated as having the date of application of the registered trade mark as regards all the goods or services in respect of which the registered trade mark was registered, taking account (where appropriate) of the priorities claimed in respect of the registered trade mark.

(4) Where the conditions specified in paragraph (1) above are satisfied in relation to a trade mark, the provisions of paragraphs (2) and (3) above shall continue to apply in respect of the relevant international trade mark (UK) notwithstanding that the relevant registered trade mark lapses or is surrendered, but shall cease to apply if it is revoked or declared invalid.

(5) On the application of the holder of the protected international trade mark (UK), the registrar shall note the international registration in the register against the registered trade mark.

(6) For the purposes of paragraph (5) above, the holder of the protected international trade mark (UK) shall make an application to the registrar using Form TM28.