SCHEDULE 3Other amendments to the 1994 Act
Further amendments to the 1994 ActI11
The 1994 Act is further amended as follows.
Absolute grounds for refusal of registrationI22
1
Section 3 M1 is amended as follows.
2
In subsection (4), omit “or by any provision of EU law”.
3
In subsection (4A)—
a
at the end of paragraph (a) insert “
or
”
;
b
omit paragraph (b) (together with the final “or”);
c
in paragraph (c), omit “or the EU”.
F14
In subsection (4B)—
a
in paragraph (a) for “provision of EU law” substitute “enactment or rule of law”;
b
in paragraph (b) for “EU” substitute “United Kingdom”.
5
In subsection (4D)—
a
at the end of paragraph (a) insert “
or
”
;
b
omit paragraph (b) (together with the final “or”);
c
in paragraph (c), omit “or the EU”.
Relative grounds for refusal of registrationI33
1
Section 5 M2 is amended as follows.
2
In subsection (3) omit “(or, in the case of a European Union trade mark or international trade mark (EC), in the European Union)”.
3
In subsection (4)(aa), omit “any provision of EU law, or”.
Meaning of “earlier trade mark”I44
1
Section 6 M3 is amended as follows.
2
In subsection (1)(a)—
a
after “registered trade mark” omit “,” and insert “
or
”
;
b
omit “European Union trade mark or international trade mark (EC)”.
3
After subsection (1)(a) insert—
aa
a comparable trade mark (EU) or a trade mark registered pursuant to an application made under paragraph 25 of Schedule 2A which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired;
4
Omit subsection (1)(b).
5
In subsection (1)(ba)(i)—
a
before “has been converted” insert “prior to F2IP completion day”
; and
b
for “within paragraph (b) from an earlier trade mark” substitute “
of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired
”
.
6
After subsection (1) insert—
1A
In subsection (1), “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008.
7
In subsection (2) omit “or (b)”.
8
After subsection (2) insert—
2A
References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made pursuant to paragraph 25 of Schedule 2A and which if registered would be an earlier trade mark by virtue of subsection (1)(aa), subject to its being so registered.
Raising of relative grounds in opposition proceedings in case of non-useI55
1
Section 6A M4 is amended as follows.
2
In subsection (1)(b) for “(b)” substitute “
(aa)
”
.
3
Omit subsections (5) and (5A).
Right to prevent goods entering the UK without being released for free circulationI66
1
Section 10A is amended as follows.
2
In subsection (1)(a) for “EU” substitute “
United Kingdom
”
.
3
In subsection (5), after “intellectual property rights” insert “
as amended from time to time
”
.
Limits on effect of registered trade markI77
1
Section 11 M5 is amended as follows.
2
Omit subsection (1A).
3
In subsection (1B), omit “or (1A)”.
Order as to disposal of infringing goods, material or articlesI88
In section 19(6)(a) M6 omit “(including that section as applied by regulation 4 of the Community Trade Mark Regulations 2006 (SI 2006/1027))”.
Grounds for invalidity of registrationI99
In section 47 M7 omit subsections (2D) and (2DA).
Meaning of “European Union trade mark”I1010
Power to make provision in connection with European Union Trade Mark RegulationI1111
Omit section 52.
Privilege for communications with registered trade mark agentsI1212
1
Section 87(3) is amended as follows.
2
At the end of paragraph (c) insert “
or
”
.
3
After paragraph (c) insert—
d
a person whose name appears on the list of professional representatives for trade mark matters maintained by the European Union Intellectual Property Office referred to in Article 120 of the European Union Trade Mark Regulation.
4
After subsection (3) insert—
4
Where a trade mark attorney is a person falling within subsection (3)(d), subsection (2) applies as if the reference to a matter mentioned in subsection (1) were a reference to a matter relating to the protection of a trade mark.
Minor definitionsI1313
In section 103 M9, omit subsection (3).
Index of defined expressionsI1414
1
Section 104 is amended as follows.
2
After the entry in the table for “commencement (of this Act)” insert—
comparable trade mark (EU)
Schedule 2A, paragraph 1(2)
3
After the entry in the table for “date of application” insert—
date of application (comparable trade mark (EU))
Schedule 2A, paragraph 1(8)(b)
4
After the entry in the table for “date of filing” insert—
date of filing (comparable trade mark (EU))
Schedule 2A, paragraph 1(8)(a)
5
After the entry in the table for “date of registration” insert—
date of registration (comparable trade mark (EU))
Schedule 2A, paragraph 1(4)