The Trade Marks (International Registration) Order 1996

MISCELLANEOUS AND GENERAL PROVISIONS

Supplementary Register

24.—(1) The registrar shall maintain a register (“the supplementary register”) for the purpose of recording, in relation to international trade marks (UK)—

(a) disclaimers and limitations;

(b) notifiable transactions.

(2) The supplementary register need not be kept in documentary form.

(3) Rules 34 to 39 apply, with the necessary modifications, in relation to the supplementary register.

Disclosure of Information

25.—(1) Before publication of notice under article 10(1) in relation to an international registration designating the United Kingdom, the registrar shall not publish or communicate to any person documents or information relating to the international registration other than as provided in paragraph (2) below.

(2) In relation to an international registration designating the United Kingdom, the registrar shall on request make available for inspection by the public all information in his possession which is recorded in the International Register concerning that registration, the particulars contained in any application for registration of a notifiable transaction and any entry in the supplementary register resulting from such an application.

(3) Subject to paragraph (5) below, after publication of notice under article 10(1) in relation to an international registration designating the United Kingdom, the registrar shall on request provide a person with such information and permit him to inspect such documents, relating to the international registration as may be specified in the request.

(4) A request for information relating to an international registration designating the United Kingdom shall be made on Form TM31M.

(5) Paragraphs (2) to (5) of rule 44, and rule 45, apply in relation to the right of inspection conferred by paragraph (3) above.

(6) Where a person has been notified that an international registration designates the United Kingdom and that the proprietor will, if the registration becomes a protected international trade mark (UK), bring proceedings against him in respect of acts done after publication of notice under article 10(1), the registrar shall on request permit inspection under paragraph (3) above notwithstanding that such notice has not been published and that paragraph shall apply accordingly.

Exclusion of Liability

26.—(1) The registrar is not subject to any liability by reason of, or in connection with, any examination required or authorised by this Order, or in any report or other proceedings consequent on such examination.

(2) No proceedings lie against an officer of the registrar in respect of any matter for which, by virtue of this article, the registrar is not liable.

Evidence of certain matters relating to an international registration

27.—(1) In all legal proceedings relating to an international trade mark (UK), the registration of a person as holder of an international trade mark (UK) shall be prima facie evidence of the validity of the original international registration and of any subsequent assignment or other transmission of it.

(2) Judicial notice shall be taken of the following—

(a) the Madrid Protocol and the Common Regulations;

(b) copies issued by the International Bureau of entries in the International Register;

(c) copies of the periodical gazette published by the International Bureau;.

(3) Any document mentioned in paragraph (2)(b) or (c) above shall be admissible as evidence of any instrument or other act thereby communicated of the International Bureau.

(4) Evidence of any instrument issued by the International Bureau or any entry in or extract from such a document may be given in any legal proceedings by production of a copy; and any document purporting to be such a copy shall be received in evidence.

(5) In any legal proceedings in Scotland, evidence of any matter given in any manner authorised by this article shall be sufficient evidence of it.

(6) In this article, “legal proceedings” includes proceedings before the registrar.

Agents

28.  Any act required or authorised by this Order to be done by or to a person in connection with a request for protection of an international registration as a protected international trade mark (UK) or any procedure relating to a protected international mark (UK) may be done by or to an agent authorised by that person orally or in writing.

Burden of proving use of international trade mark (UK)

29.  If in any civil proceedings pursuant to this Order a question arises as to the use to which an international trade mark (UK) has been put, it is for the holder to show what use has been made of it.

Communication of information to the International Bureau

30.  Notwithstanding section 67(2) or any other enactment or rule of law, the registrar may communicate to the International Bureau any information which the United Kingdom is required to communicate by virtue of this Order or pursuant to the Madrid Protocol or the Common Regulations.

Transmission of fees to the International Bureau

31.  The registrar may accept for transmission to the International Bureau fees payable to the International Bureau in respect of an application for international registration originating in the United Kingdom or a renewal of such an international registration, subject to such terms and conditions as he may specify, either generally by published notice, or in any particular case by written notice to the applicant desiring to make payment by such means.

Application of Trade Marks Rules 1994

32.—(1) Except as otherwise provided, or where their application would be inconsistent with the provisions of this Order, the Rules shall apply, with the necessary modifications, in relation to an international registration designating the United Kingdom, (including a protected international trade mark (UK)) as in relation to a registered trade mark or application.

(2) In their application to an international registration designating the United Kingdom, the Rules shall be treated in all respects as rules made under the Act and, in particular, rules relating to costs and security for costs and to evidence before the registrar shall be enforceable in relation to proceedings under this Order in the same manner as in relation to proceedings relating to a registered trade mark or application.