The Trade Marks (International Registration) Order 1996

Effects of Protected International Trade Mark (UK)

4.—(1) The proprietor of a protected international trade mark (UK) has, subject to the provisions of this Order, the same rights and remedies as are given by or under sections 9 to 12 and 14 to 20 to the proprietor of a registered trade mark, subject to the limits on effect and to the provisions relating to exhaustion which are applicable to a registered trade mark by virtue of section 11 and section 12 respectively.

(2) For the purposes of section 9 (rights conferred by registered trade mark)—

(a) the rights of the proprietor shall have effect as of the date on which it is to be treated as registered pursuant to article 12 or article 21;

(b) a protected international trade mark (UK) shall be treated as being in fact registered when it becomes protected pursuant to article 12.

(3) References in sections 10 and 11 to goods or services in respect of which a trade mark is registered are to goods or services in respect of which a protected international trade mark (UK) confers protection in the United Kingdom.

(4) Where the holder of an international registration designating the United Kingdom by notice in writing sent to the registrar—

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

(b) agrees that the rights conferred in the United Kingdom by the international registration shall be subject to a specified territorial or other limitation,

the registrar shall enter the disclaimer or limitation in the supplementary register and shall publish the disclaimer or limitation.

(5) Where a protected international trade mark (UK) is subject to a disclaimer or limitation, the rights conferred in relation to it by the application of section 9 are restricted accordingly.

(6) The remedy for groundless threats of infringement proceedings given by section 21 applies in relation to a protected international trade mark (UK) as in relation to a registered trade mark; and for this purpose—

(a) the reference in section 21(3) to the registration of the trade mark shall be treated as a reference to protection of a protected international trade mark (UK); and

(b) the reference in section 21(4) to notification that a trade mark is registered, or that an application for registration has been made, shall be treated as a reference to notification that a trade mark is a protected international trade mark (UK) or is the subject of an international application or international registration designating the United Kingdom.