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1994
Chapter c. 26
[21st July 1994]
An Act
to make new provision for registered trade
marks, implementing Council Directive No.
89/104/EEC of 21st December 1988 to
approximate the laws of the Member States
relating to trade marks; to make provision
in connection with Council Regulation (EC)
No. 40/94 of 20th December 1993 on the
Community trade mark; to give effect to the
Madrid Protocol Relating to the
International Registration of Marks of 27th
June 1989, and to certain provisions of the
Paris Convention for the Protection of
Industrial Property of 20th March 1883, as
revised and amended; and for connected
purposes.
Be it enacted by the Queen's most Excellent
Majesty, by and with the advice and consent
of the Lords Spiritual and Temporal, and
Commons, in this present Parliament
assembled, and by the authority of the same,
as follows:—
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ARRANGEMENT OF SECTIONS - Part I
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Part I |
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Registered
trade marks |
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Introductory |
Trade marks.
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1.—(1) In
this Act a "trade mark" means
any sign capable of being represented
graphically which is capable of
distinguishing goods or services of one
undertaking from those of other
undertakings.
A trade mark may,
in particular, consist of words
(including personal names), designs,
letters, numerals or the shape of goods
or their packaging.
(2) References
in this Act to a trade mark include,
unless the context otherwise requires,
references to a collective mark (see
section 49) or certification mark (see
section 50). |
Registered trade marks.
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2.—(1) A
registered trade mark is a property right
obtained by the registration of the trade
mark under this Act and the proprietor of
a registered trade mark has the rights and
remedies provided by this Act.
(2) No
proceedings lie to prevent or recover
damages for the infringement of an
unregistered trade mark as such; but
nothing in this Act affects the law
relating to passing off. |
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Grounds for refusal of registration |
Absolute grounds for
refusal of registration.
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3.—(1) The
following shall not be registered—
(a) signs
which do not satisfy the requirements of
section 1(1),
(b) trade
marks which are devoid of any
distinctive character,
(c) trade
marks which consist exclusively of signs
or indications which may serve, in
trade, to designate the kind, quality,
quantity, intended purpose, value,
geographical origin, the time of
production of goods or of rendering of
services, or other characteristics of
goods or services,
(d) trade
marks which consist exclusively of signs
or indications which have become
customary in the current language or in
the bona fide and established
practices of the trade:
Provided that, a
trade mark shall not be refused
registration by virtue of paragraph
(b), (c) or (d) above if, before the
date of application for registration,
it has in fact acquired a distinctive
character as a result of the use made
of it.
(2) A
sign shall not be registered as a trade
mark if it consists exclusively of—
(a) the
shape which results from the nature of
the goods themselves,
(b) the
shape of goods which is necessary to
obtain a technical result, or
(c) the
shape which gives substantial value to
the goods.
(3) A
trade mark shall not be registered if it
is—
(a) contrary
to public policy or to accepted
principles of morality, or
(b) of
such a nature as to deceive the public
(for instance as to the nature, quality
or geographical origin of the goods or
service).
(4) A
trade mark shall not be registered if or
to the extent that its use is prohibited
in the United Kingdom by any enactment or
rule of law or by any provision of
Community law.
(5) A trade
mark shall not be registered in the cases
specified, or referred to, in section 4
(specially protected emblems).
(6) A trade
mark shall not be registered if or to the
extent that the application is made in bad
faith. |
Specially protected
emblems.
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4.—(1) A
trade mark which consists of or
contains—
(a) the
Royal arms, or any of the principal
armorial bearings of the Royal arms, or
any insignia or device so nearly
resembling the Royal arms or any such
armorial bearing as to be likely to be
mistaken for them or it,
(b) a
representation of the Royal crown or any
of the Royal flags,
(c) a
representation of Her Majesty or any
member of the Royal family, or any
colourable imitation thereof, or
(d) words,
letters or devices likely to lead
persons to think that the applicant
either has or recently has had Royal
patronage or authorisation,
shall not be
registered unless it appears to the
registrar that consent has been given by
or on behalf of Her Majesty or, as the
case may be, the relevant member of the
Royal family.
(2) A trade
mark which consists of or contains a
representation of—
(a) the
national flag of the United Kingdom
(commonly known as the Union Jack), or
(b) the
flag of England, Wales, Scotland,
Northern Ireland or the Isle of Man,
shall not be
registered if it appears to the registrar
that the use of the trade mark would be
misleading or grossly offensive.
Provision may be
made by rules identifying the flags to
which paragraph (b) applies.
(3) A trade
mark shall not be registered in the cases
specified in—
section 57
(national emblems, &c. of Convention
countries), or
section 58
(emblems, &c. of certain
international organisations).
(4) Provision
may be made by rules prohibiting in such
cases as may be prescribed the
registration of a trade mark which
consists of or contains—
(a) arms
to which a person is entitled by virtue
of a grant of arms by the Crown, or
(b) insignia
so nearly resembling such arms as to be
likely to be mistaken for them,
unless it appears to
the registrar that consent has been given
by or on behalf of that person.
Where such a mark
is registered, nothing in this Act shall
be construed as authorising its use in
any way contrary to the laws of arms.
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Relative grounds for
refusal of registration.
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5.—(1) A
trade mark shall not be registered if it
is identical with an earlier trade mark
and the goods or services for which the
trade mark is applied for are identical
with the goods or services for which the
earlier trade mark is protected.
(2) A trade
mark shall not be registered if because—
(a) it
is identical with an earlier trade mark
and is to be registered for goods or
services similar to those for which the
earlier trade mark is protected, or
(b) it
is similar to an earlier trade mark and
is to be registered for goods or
services identical with or similar to
those for which the earlier trade mark
is protected,
there exists a
likelihood of confusion on the part of the
public, which includes the likelihood of
association with the earlier trade mark.
(3) A trade
mark which—
(a) is
identical with or similar to an earlier
trade mark, and
(b) is
to be registered for goods or services
which are not similar to those for which
the earlier trade mark is protected,
shall not be
registered if, or to the extent that, the
earlier trade mark has a reputation in the
United Kingdom (or, in the case of a
Community trade mark, in the European
Community) and the use of the later mark
without due cause would take unfair
advantage of, or be detrimental to, the
distinctive character or the repute of the
earlier trade mark.
(4) A trade
mark shall not be registered if, or to the
extent that, its use in the United Kingdom
is liable to be prevented—
(a) by
virtue of any rule of law (in
particular, the law of passing off)
protecting an unregistered trade mark or
other sign used in the course of trade,
or
(b) by
virtue of an earlier right other than
those referred to in subsections (1) to
(3) or paragraph (a) above, in
particular by virtue of the law of
copyright, design right or registered
designs.
A person thus
entitled to prevent the use of a trade
mark is referred to in this Act as the
proprietor of an "earlier right"
in relation to the trade mark.
(5) Nothing
in this section prevents the registration
of a trade mark where the proprietor of
the earlier trade mark or other earlier
right consents to the registration. |
Meaning of "earlier
trade mark".
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6.—(1) In
this Act an "earlier trade mark"
means—
(a) a
registered trade mark, international
trade mark (UK) or Community trade mark
which has a date of application for
registration earlier than that of the
trade mark in question, taking account
(where appropriate) of the priorities
claimed in respect of the trade marks,
(b) a
Community trade mark which has a valid
claim to seniority from an earlier
registered trade mark or international
trade mark (UK), or
(c) a
trade mark which, at the date of
application for registration of the
trade mark in question or (where
appropriate) of the priority claimed in
respect of the application, was entitled
to protection under the Paris Convention
as a well known trade mark.
(2) References
in this Act to an earlier trade mark
include a trade mark in respect of which
an application for registration has been
made and which, if registered, would be an
earlier trade mark by virtue of subsection
(1)(a) or (b), subject to its being so
registered.
(3) A trade
mark within subsection (1)(a) or (b) whose
registration expires shall continue to be
taken into account in determining the
registrability of a later mark for a
period of one year after the expiry unless
the registrar is satisfied that there was
no bona fide use of the mark during
the two years immediately preceding the
expiry. |
Raising of relative grounds
in case of honest concurrent use.
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7.—(1) This
section applies where on an application
for the registration of a trade mark it
appears to the registrar—
(a) that
there is an earlier trade mark in
relation to which the conditions set out
in section 5(1), (2) or (3) obtain, or
(b) that
there is an earlier right in relation to
which the condition set out in section
5(4) is satisfied,
but the applicant
shows to the satisfaction of the registrar
that there has been honest concurrent use
of the trade mark for which registration
is sought.
(2) In that
case the registrar shall not refuse the
application by reason of the earlier trade
mark or other earlier right unless
objection on that ground is raised in
opposition proceedings by the proprietor
of that earlier trade mark or other
earlier right.
(3) For the
purposes of this section "honest
concurrent use" means such use in the
United Kingdom, by the applicant or with
his consent, as would formerly have
amounted to honest concurrent use for the
purposes of section 12(2) of the [1938
c. 22.] Trade Marks Act 1938.
(4) Nothing
in this section affects—
(a) the
refusal of registration on the grounds
mentioned in section 3 (absolute grounds
for refusal), or
(b) the
making of an application for a
declaration of invalidity under section
47(2) (application on relative grounds
where no consent to registration).
(5) This
section does not apply when there is an
order in force under section 8 below. |
Power to require that
relative grounds be raised in opposition
proceedings.
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8.—(1) The
Secretary of State may by order provide
that in any case a trade mark shall not be
refused registration on a ground mentioned
in section 5 (relative grounds for
refusal) unless objection on that ground
is raised in opposition proceedings by the
proprietor of the earlier trade mark or
other earlier right.
(2) The order
may make such consequential provision as
appears to the Secretary of State
appropriate—
(a) with
respect to the carrying out by the
registrar of searches of earlier trade
marks, and
(b) as
to the persons by whom an application
for a declaration of invalidity may be
made on the grounds specified in section
47(2) (relative grounds).
(3) An
order making such provision as is
mentioned in subsection (2)(a) may direct
that so much of section 37 (examination of
application) as requires a search to be
carried out shall cease to have effect.
(4) An order
making such provision as is mentioned in
subsection (2)(b) may provide that so much
of section 47(3) as provides that any
person may make an application for a
declaration of invalidity shall have
effect subject to the provisions of the
order.
(5) An order
under this section shall be made by
statutory instrument, and no order shall
be made unless a draft of it has been laid
before and approved by a resolution of
each House of Parliament.
No such draft of
an order making such provision as is
mentioned in subsection (1) shall be
laid before Parliament until after the
end of the period of ten years beginning
with the day on which applications for
Community trade marks may first be filed
in pursuance of the Community Trade Mark
Regulation.
(6) An order
under this section may contain such
transitional provisions as appear to the
Secretary of State to be appropriate. |
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Effects of registered trade mark |
Rights conferred by
registered trade mark.
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9.—(1) The
proprietor of a registered trade mark has
exclusive rights in the trade mark which
are infringed by use of the trade mark in
the United Kingdom without his consent.
The acts amounting
to infringement, if done without the
consent of the proprietor, are specified
in section 10.
(2) References
in this Act to the infringement of a
registered trade mark are to any such
infringement of the rights of the
proprietor.
(3) The
rights of the proprietor have effect from
the date of registration (which in
accordance with section 40(3) is the date
of filing of the application for
registration):
Provided that—
(a) no
infringement proceedings may be begun
before the date on which the trade
mark is in fact registered; and
(b) no
offence under section 92 (unauthorised
use of trade mark, &c. in relation
to goods) is committed by anything
done before the date of publication of
the registration.
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Infringement of registered
trade mark.
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10.—(1) A
person infringes a registered trade mark
if he uses in the course of trade a sign
which is identical with the trade mark in
relation to goods or services which are
identical with those for which it is
registered.
(2) A person
infringes a registered trade mark if he
uses in the course of trade a sign where
because—
(a) the
sign is identical with the trade mark
and is used in relation to goods or
services similar to those for which the
trade mark is registered, or
(b) the
sign is similar to the trade mark and is
used in relation to goods or services
identical with or similar to those for
which the trade mark is registered,
there exists a
likelihood of confusion on the part of the
public, which includes the likelihood of
association with the trade mark.
(3) A person
infringes a registered trade mark if he
uses in the course of trade a sign
which—
(a) is
identical with or similar to the trade
mark, and
(b) is
used in relation to goods or services
which are not similar to those for which
the trade mark is registered,
where the trade mark
has a reputation in the United Kingdom and
the use of the sign, being without due
cause, takes unfair advantage of, or is
detrimental to, the distinctive character
or the repute of the trade mark.
(4) For the
purposes of this section a person uses a
sign if, in particular, he—
(a) affixes
it to goods or the packaging thereof;
(b) offers
or exposes goods for sale, puts them on
the market or stocks them for those
purposes under the sign, or offers or
supplies services under the sign;
(c) imports
or exports goods under the sign; or
(d) uses
the sign on business papers or in
advertising.
(5) A
person who applies a registered trade mark
to material intended to be used for
labelling or packaging goods, as a
business paper, or for advertising goods
or services, shall be treated as a party
to any use of the material which infringes
the registered trade mark if when he
applied the mark he knew or had reason to
believe that the application of the mark
was not duly authorised by the proprietor
or a licensee.
(6) Nothing
in the preceding provisions of this
section shall be construed as preventing
the use of a registered trade mark by any
person for the purpose of identifying
goods or services as those of the
proprietor or a licensee.
But any such use
otherwise than in accordance with honest
practices in industrial or commercial
matters shall be treated as infringing
the registered trade mark if the use
without due cause takes unfair advantage
of, or is detrimental to, the
distinctive character or repute of the
trade mark.
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Limits on effect of
registered trade mark.
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11.—(1) A
registered trade mark is not infringed by
the use of another registered trade mark
in relation to goods or services for which
the latter is registered (but see section
47(6) (effect of declaration of invalidity
of registration)).
(2) A
registered trade mark is not infringed
by—
(a) the
use by a person of his own name or
address,
(b) the
use of indications concerning the kind,
quality, quantity, intended purpose,
value, geographical origin, the time of
production of goods or of rendering of
services, or other characteristics of
goods or services, or
(c) the
use of the trade mark where it is
necessary to indicate the intended
purpose of a product or service (in
particular, as accessories or spare
parts),
provided the use is
in accordance with honest practices in
industrial or commercial matters.
(3) A
registered trade mark is not infringed by
the use in the course of trade in a
particular locality of an earlier right
which applies only in that locality.
For this purpose
an "earlier right" means an
unregistered trade mark or other sign
continuously used in relation to goods
or services by a person or a predecessor
in title of his from a date prior to
whichever is the earlier of—
(a) the
use of the first-mentioned trade mark
in relation to those goods or services
by the proprietor or a predecessor in
title of his, or
(b) the
registration of the first-mentioned
trade mark in respect of those goods
or services in the name of the
proprietor or a predecessor in title
of his;
and an earlier
right shall be regarded as applying in a
locality if, or to the extent that, its
use in that locality is protected by
virtue of any rule of law (in
particular, the law of passing off).
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Exhaustion of rights
conferred by registered trade mark.
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12.—(1) A
registered trade mark is not infringed by
the use of the trade mark in relation to
goods which have been put on the market in
the European Economic Area under that
trade mark by the proprietor or with his
consent.
(2) Subsection
(1) does not apply where there exist
legitimate reasons for the proprietor to
oppose further dealings in the goods (in
particular, where the condition of the
goods has been changed or impaired after
they have been put on the market). |
Registration subject to
disclaimer or limitation.
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13.—(1) An
applicant for registration of a trade
mark, or the proprietor of a registered
trade mark, may—
(a) disclaim
any right to the exclusive use of any
specified element of the trade mark, or
(b) agree
that the rights conferred by the
registration shall be subject to a
specified territorial or other
limitation;
and where the
registration of a trade mark is subject to
a disclaimer or limitation, the rights
conferred by section 9 (rights conferred
by registered trade mark) are restricted
accordingly.
(2) Provision
shall be made by rules as to the
publication and entry in the register of a
disclaimer or limitation. |
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Infringement proceedings |
Action for infringement.
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14.—(1) An
infringement of a registered trade mark is
actionable by the proprietor of the trade
mark.
(2) In an
action for infringement all such relief by
way of damages, injunctions, accounts or
otherwise is available to him as is
available in respect of the infringement
of any other property right. |
Order for erasure, &c.
of offending sign.
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15.—(1) Where
a person is found to have infringed a
registered trade mark, the court may make
an order requiring him—
(a) to
cause the offending sign to be erased,
removed or obliterated from any
infringing goods, material or articles
in his possession, custody or control,
or
(b) if
it is not reasonably practicable for the
offending sign to be erased, removed or
obliterated, to secure the destruction
of the infringing goods, material or
articles in question.
(2) If
an order under subsection (1) is not
complied with, or it appears to the court
likely that such an order would not be
complied with, the court may order that
the infringing goods, material or articles
be delivered to such person as the court
may direct for erasure, removal or
obliteration of the sign, or for
destruction, as the case may be. |
Order for delivery up of
infringing goods, material or articles.
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16.—(1) The
proprietor of a registered trade mark may
apply to the court for an order for the
delivery up to him, or such other person
as the court may direct, of any infringing
goods, material or articles which a person
has in his possession, custody or control
in the course of a business.
(2) An
application shall not be made after the
end of the period specified in section 18
(period after which remedy of delivery up
not available); and no order shall be made
unless the court also makes, or it appears
to the court that there are grounds for
making, an order under section 19 (order
as to disposal of infringing goods,
&c.).
(3) A person
to whom any infringing goods, material or
articles are delivered up in pursuance of
an order under this section shall, if an
order under section 19 is not made, retain
them pending the making of an order, or
the decision not to make an order, under
that section.
(4) Nothing
in this section affects any other power of
the court. |
Meaning of "infringing
goods, material or articles".
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17.—(1) In
this Act the expressions "infringing
goods" , "infringing
material" and "infringing
articles" shall be construed as
follows.
(2) Goods are
"infringing goods" , in relation
to a registered trade mark, if they or
their packaging bear a sign identical or
similar to that mark and—
(a) the
application of the sign to the goods or
their packaging was an infringement of
the registered trade mark, or
(b) the
goods are proposed to be imported into
the United Kingdom and the application
of the sign in the United Kingdom to
them or their packaging would be an
infringement of the registered trade
mark, or
(c) the
sign has otherwise been used in relation
to the goods in such a way as to
infringe the registered trade mark.
(3) Nothing
in subsection (2) shall be construed as
affecting the importation of goods which
may lawfully be imported into the United
Kingdom by virtue of an enforceable
Community right.
(4) Material
is "infringing material" , in
relation to a registered trade mark if it
bears a sign identical or similar to that
mark and either—
(a) it
is used for labelling or packaging
goods, as a business paper, or for
advertising goods or services, in such a
way as to infringe the registered trade
mark, or
(b) it
is intended to be so used and such use
would infringe the registered trade
mark.
(5) "Infringing
articles", in relation to a
registered trade mark, means articles—
(a) which
are specifically designed or adapted for
making copies of a sign identical or
similar to that mark, and
(b) which
a person has in his possession, custody
or control, knowing or having reason to
believe that they have been or are to be
used to produce infringing goods or
material.
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Period after which remedy
of delivery up not available.
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18.—(1) An
application for an order under section 16
(order for delivery up of infringing
goods, material or articles) may not be
made after the end of the period of six
years from—
(a) in
the case of infringing goods, the date
on which the trade mark was applied to
the goods or their packaging,
(b) in
the case of infringing material, the
date on which the trade mark was applied
to the material, or
(c) in
the case of infringing articles, the
date on which they were made,
except as mentioned
in the following provisions.
(2) If during
the whole or part of that period the
proprietor of the registered trade mark—
(a) is
under a disability, or
(b) is
prevented by fraud or concealment from
discovering the facts entitling him to
apply for an order,
an application may
be made at any time before the end of the
period of six years from the date on which
he ceased to be under a disability or, as
the case may be, could with reasonable
diligence have discovered those facts.
(3) In
subsection (2) "disability"—
(a) in
England and Wales, has the same meaning
as in the [1980 c. 58.]
Limitation Act 1980;
(b) in
Scotland, means legal disability within
the meaning of the [1973 c. 52.]
Prescription and Limitation (Scotland)
Act 1973;
(c) in
Northern Ireland, has the same meaning
as in the [S.I. 1989/1339
(N.I. 11).] Limitation (Northern
Ireland) Order 1989.
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Order as to disposal of
infringing goods, material or articles.
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19.—(1) Where
infringing goods, material or articles
have been delivered up in pursuance of an
order under section 16, an application may
be made to the court—
(a) for
an order that they be destroyed or
forfeited to such person as the court
may think fit, or
(b) for
a decision that no such order should be
made.
(2) In
considering what order (if any) should be
made, the court shall consider whether
other remedies available in an action for
infringement of the registered trade mark
would be adequate to compensate the
proprietor and any licensee and protect
their interests.
(3) Provision
shall be made by rules of court as to the
service of notice on persons having an
interest in the goods, material or
articles, and any such person is
entitled—
(a) to
appear in proceedings for an order under
this section, whether or not he was
served with notice, and
(b) to
appeal against any order made, whether
or not he appeared;
and an order shall
not take effect until the end of the
period within which notice of an appeal
may be given or, if before the end of that
period notice of appeal is duly given,
until the final determination or
abandonment of the proceedings on the
appeal.
(4) Where
there is more than one person interested
in the goods, material or articles, the
court shall make such order as it thinks
just.
(5) If the
court decides that no order should be made
under this section, the person in whose
possession, custody or control the goods,
material or articles were before being
delivered up is entitled to their return.
(6) References
in this section to a person having an
interest in goods, material or articles
include any person in whose favour an
order could be made under this section or
under section 114, 204 or 231 of the [1988
c. 48.] Copyright, Designs and
Patents Act 1988 (which make similar
provision in relation to infringement of
copyright, rights in performances and
design right). |
Jurisdiction of sheriff
court or county court in Northern Ireland.
|
20. Proceedings
for an order under section 16 (order for
delivery up of infringing goods, material
or articles) or section 19 (order as to
disposal of infringing goods, &c.) may
be brought—
(a) in
the sheriff court in Scotland, or
(b) in
a county court in Northern Ireland.
This does not affect
the jurisdiction of the Court of Session
or the High Court in Northern Ireland. |
Remedy for groundless
threats of infringement proceedings.
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21.—(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. |
| |
Registered trade mark as object of
property |
Nature of registered trade
mark.
|
22. A
registered trade mark is personal property
(in Scotland, incorporeal moveable
property). |
Co-ownership of registered
trade mark.
|
23.—(1) Where
a registered trade mark is granted to two
or more persons jointly, each of them is
entitled, subject to any agreement to the
contrary, to an equal undivided share in
the registered trade mark.
(2) The
following provisions apply where two or
more persons are co-proprietors of a
registered trade mark, by virtue of
subsection (1) or otherwise.
(3) Subject
to any agreement to the contrary, each
co-proprietor is entitled, by himself or
his agents, to do for his own benefit and
without the consent of or the need to
account to the other or others, any act
which would otherwise amount to an
infringement of the registered trade mark.
(4) One
co-proprietor may not without the consent
of the other or others—
(a) grant
a licence to use the registered trade
mark, or
(b) assign
or charge his share in the registered
trade mark (or, in Scotland, cause or
permit security to be granted over it).
(5) Infringement
proceedings may be brought by any
co-proprietor, but he may not, without the
leave of the court, proceed with the
action unless the other, or each of the
others, is either joined as a plaintiff or
added as a defendant.
A co-proprietor
who is thus added as a defendant shall
not be made liable for any costs in the
action unless he takes part in the
proceedings.
Nothing in this
subsection affects the granting of
interlocutory relief on the application
of a single co-proprietor.
(6) Nothing
in this section affects the mutual rights
and obligations of trustees or personal
representatives, or their rights and
obligations as such. |
Assignment, &c. of
registered trade mark.
|
24.—(1) A
registered trade mark is transmissible by
assignment, testamentary disposition or
operation of law in the same way as other
personal or moveable property.
It is so
transmissible either in connection with
the goodwill of a business or
independently.
(2) An
assignment or other transmission of a
registered trade mark may be partial, that
is, limited so as to apply—
(a) in
relation to some but not all of the
goods or services for which the trade
mark is registered, or
(b) in
relation to use of the trade mark in a
particular manner or a particular
locality.
(3) An
assignment of a registered trade mark, or
an assent relating to a registered trade
mark, is not effective unless it is in
writing signed by or on behalf of the
assignor or, as the case may be, a
personal representative.
Except in
Scotland, this requirement may be
satisfied in a case where the assignor
or personal representative is a body
corporate by the affixing of its seal.
(4) The above
provisions apply to assignment by way of
security as in relation to any other
assignment.
(5) A
registered trade mark may be the subject
of a charge (in Scotland, security) in the
same way as other personal or moveable
property.
(6) Nothing
in this Act shall be construed as
affecting the assignment or other
transmission of an unregistered trade mark
as part of the goodwill of a business. |
Registration of
transactions affecting registered trade
mark.
|
25.—(1) On
application being made to the registrar
by—
(a) a
person claiming to be entitled to an
interest in or under a registered trade
mark by virtue of a registrable
transaction, or
(b) any
other person claiming to be affected by
such a transaction,
the prescribed
particulars of the transaction shall be
entered in the register.
(2) The
following are registrable transactions—
(a) an
assignment of a registered trade mark or
any right in it;
(b) the
grant of a licence under a registered
trade mark;
(c) the
granting of any security interest
(whether fixed or floating) over a
registered trade mark or any right in or
under it;
(d) the
making by personal representatives of an
assent in relation to a registered trade
mark or any right in or under it;
(e) an
order of a court or other competent
authority transferring a registered
trade mark or any right in or under it.
(3) Until
an application has been made for
registration of the prescribed particulars
of a registrable transaction—
(a) the
transaction is ineffective as against a
person acquiring a conflicting interest
in or under the registered trade mark in
ignorance of it, and
(b) a
person claiming to be a licensee by
virtue of the transaction does not have
the protection of section 30 or 31
(rights and remedies of licensee in
relation to infringement).
(4) Where
a person becomes the proprietor or a
licensee of a registered trade mark by
virtue of a registrable transaction, then
unless—
(a) an
application for registration of the
prescribed particulars of the
transaction is made before the end of
the period of six months beginning with
its date, or
(b) the
court is satisfied that it was not
practicable for such an application to
be made before the end of that period
and that an application was made as soon
as practicable thereafter,
he is not entitled
to damages or an account of profits in
respect of any infringement of the
registered trade mark occurring after the
date of the transaction and before the
prescribed particulars of the transaction
are registered.
(5) Provision
may be made by rules as to—
(a) the
amendment of registered particulars
relating to a licence so as to reflect
any alteration of the terms of the
licence, and
(b) the
removal of such particulars from the
register—
(i) where
it appears from the registered
particulars that the licence was
granted for a fixed period and that
period has expired, or
(ii) where
no such period is indicated and, after
such period as may be prescribed, the
registrar has notified the parties of
his intention to remove the
particulars from the register.
(6) Provision
may also be made by rules as to the
amendment or removal from the register of
particulars relating to a security
interest on the application of, or with
the consent of, the person entitled to the
benefit of that interest. |
Trusts and equities.
|
26.—(1) No
notice of any trust (express, implied or
constructive) shall be entered in the
register; and the registrar shall not be
affected by any such notice.
(2) Subject
to the provisions of this Act, equities
(in Scotland, rights) in respect of a
registered trade mark may be enforced in
like manner as in respect of other
personal or moveable property. |
Application for
registration of trade mark as an object of
property.
|
27.—(1) The
provisions of sections 22 to 26 (which
relate to a registered trade mark as an
object of property) apply, with the
necessary modifications, in relation to an
application for the registration of a
trade mark as in relation to a registered
trade mark.
(2) In
section 23 (co-ownership of registered
trade mark) as it applies in relation to
an application for registration the
reference in subsection (1) to the
granting of the registration shall be
construed as a reference to the making of
the application.
(3) In
section 25 (registration of transactions
affecting registered trade marks) as it
applies in relation to a transaction
affecting an application for the
registration of a trade mark, the
references to the entry of particulars in
the register, and to the making of an
application to register particulars, shall
be construed as references to the giving
of notice to the registrar of those
particulars. |
| |
Licensing |
Licensing of registered
trade mark.
|
28.—(1) A
licence to use a registered trade mark may
be general or limited.
A limited licence
may, in particular, apply—
(a) in
relation to some but not all of the
goods or services for which the trade
mark is registered, or
(b) in
relation to use of the trade mark in a
particular manner or a particular
locality.
(2) A
licence is not effective unless it is in
writing signed by or on behalf of the
grantor.
Except in
Scotland, this requirement may be
satisfied in a case where the grantor is
a body corporate by the affixing of its
seal.
(3) Unless
the licence provides otherwise, it is
binding on a successor in title to the
grantor's interest.
References in this
Act to doing anything with, or without,
the consent of the proprietor of a
registered trade mark shall be construed
accordingly.
(4) Where the
licence so provides, a sub-licence may be
granted by the licensee; and references in
this Act to a licence or licensee include
a sub-licence or sub-licensee. |
Exclusive licences.
|
29.—(1) In
this Act an "exclusive licence"
means a licence (whether general or
limited) authorising the licensee to the
exclusion of all other persons, including
the person granting the licence, to use a
registered trade mark in the manner
authorised by the licence.
The expression
"exclusive licensee" shall be
construed accordingly.
(2) An
exclusive licensee has the same rights
against a successor in title who is bound
by the licence as he has against the
person granting the licence. |
General provisions as to
rights of licensees in case of
infringement.
|
30.—(1) This
section has effect with respect to the
rights of a licensee in relation to
infringement of a registered trade mark.
The provisions of
this section do not apply where or to
the extent that, by virtue of section
31(1) below (exclusive licensee having
rights and remedies of assignee), the
licensee has a right to bring
proceedings in his own name.
(2) A
licensee is entitled, unless his licence,
or any licence through which his interest
is derived, provides otherwise, to call on
the proprietor of the registered trade
mark to take infringement proceedings in
respect of any matter which affects his
interests.
(3) If the
proprietor—
(b) fails
to do so within two months after being
called upon,
the licensee may
bring the proceedings in his own name as
if he were the proprietor.
(4) Where
infringement proceedings are brought by a
licensee by virtue of this section, the
licensee may not, without the leave of the
court, proceed with the action unless the
proprietor is either joined as a plaintiff
or added as a defendant.
This does not
affect the granting of interlocutory
relief on an application by a licensee
alone.
(5) A
proprietor who is added as a defendant as
mentioned in subsection (4) shall not be
made liable for any costs in the action
unless he takes part in the proceedings.
(6) In
infringement proceedings brought by the
proprietor of a registered trade mark any
loss suffered or likely to be suffered by
licensees shall be taken into account; and
the court may give such directions as it
thinks fit as to the extent to which the
plaintiff is to hold the proceeds of any
pecuniary remedy on behalf of licensees.
(7) The
provisions of this section apply in
relation to an exclusive licensee if or to
the extent that he has, by virtue of
section 31(1), the rights and remedies of
an assignee as if he were the proprietor
of the registered trade mark. |
Exclusive licensee having
rights and remedies of assignee.
|
31.—(1) An
exclusive licence may provide that the
licensee shall have, to such extent as may
be provided by the licence, the same
rights and remedies in respect of matters
occurring after the grant of the licence
as if the licence had been an assignment.
Where or to the
extent that such provision is made, the
licensee is entitled, subject to the
provisions of the licence and to the
following provisions of this section, to
bring infringement proceedings, against
any person other than the proprietor, in
his own name.
(2) Any such
rights and remedies of an exclusive
licensee are concurrent with those of the
proprietor of the registered trade mark;
and references to the proprietor of a
registered trade mark in the provisions of
this Act relating to infringement shall be
construed accordingly.
(3) In an
action brought by an exclusive licensee by
virtue of this section a defendant may
avail himself of any defence which would
have been available to him if the action
had been brought by the proprietor of the
registered trade mark.
(4) Where
proceedings for infringement of a
registered trade mark brought by the
proprietor or an exclusive licensee relate
wholly or partly to an infringement in
respect of which they have concurrent
rights of action, the proprietor or, as
the case may be, the exclusive licensee
may not, without the leave of the court,
proceed with the action unless the other
is either joined as a plaintiff or added
as a defendant.
This does not
affect the granting of interlocutory
relief on an application by a proprietor
or exclusive licensee alone.
(5) A person
who is added as a defendant as mentioned
in subsection (4) shall not be made liable
for any costs in the action unless he
takes part in the proceedings.
(6) Where an
action for infringement of a registered
trade mark is brought which relates wholly
or partly to an infringement in respect of
which the proprietor and an exclusive
licensee have or had concurrent rights of
action—
(a) the
court shall in assessing damages take
into account—
(i) the
terms of the licence, and
(ii) any
pecuniary remedy already awarded or
available to either of them in respect
of the infringement;
(b) no
account of profits shall be directed if
an award of damages has been made, or an
account of profits has been directed, in
favour of the other of them in respect
of the infringement; and
(c) the
court shall if an account of profits is
directed apportion the profits between
them as the court considers just,
subject to any agreement between them.
The provisions of
this subsection apply whether or not the
proprietor and the exclusive licensee
are both parties to the action; and if
they are not both parties the court may
give such directions as it thinks fit as
to the extent to which the party to the
proceedings is to hold the proceeds of
any pecuniary remedy on behalf of the
other.
(7) The
proprietor of a registered trade mark
shall notify any exclusive licensee who
has a concurrent right of action before
applying for an order under section 16
(order for delivery up); and the court may
on the application of the licensee make
such order under that section as it thinks
fit having regard to the terms of the
licence.
(8) The
provisions of subsections (4) to (7) above
have effect subject to any agreement to
the contrary between the exclusive
licensee and the proprietor. |
| |
Application for registered trade mark |
Application for
registration.
|
32.—(1) An
application for registration of a trade
mark shall be made to the registrar.
(2) The
application shall contain—
(a) a
request for registration of a trade
mark,
(b) the
name and address of the applicant,
(c) a
statement of the goods or services in
relation to which it is sought to
register the trade mark, and
(d) a
representation of the trade mark.
(3) The
application shall state that the trade
mark is being used, by the applicant or
with his consent, in relation to those
goods or services, or that he has a bona
fide intention that it should be so
used.
(4) The
application shall be subject to the
payment of the application fee and such
class fees as may be appropriate. |
Date of filing.
|
33.—(1) The
date of filing of an application for
registration of a trade mark is the date
on which documents containing everything
required by section 32(2) are furnished to
the registrar by the applicant.
If the documents
are furnished on different days, the
date of filing is the last of those
days.
(2) References
in this Act to the date of application for
registration are to the date of filing of
the application. |
Classification of trade
marks.
|
34.—(1) Goods
and services shall be classified for the
purposes of the registration of trade
marks according to a prescribed system of
classification.
(2) Any
question arising as to the class within
which any goods or services fall shall be
determined by the registrar, whose
decision shall be final. |
| |
Priority |
Claim to priority of
Convention application.
|
35.—(1) A
person who has duly filed an application
for protection of a trade mark in a
Convention country (a "Convention
application"), or his successor in
title, has a right to priority, for the
purposes of registering the same trade
mark under this Act for some or all of the
same goods or services, for a period of
six months from the date of filing of the
first such application.
(2) If the
application for registration under this
Act is made within that six-month
period—
(a) the
relevant date for the purposes of
establishing which rights take
precedence shall be the date of filing
of the first Convention application, and
(b) the
registrability of the trade mark shall
not be affected by any use of the mark
in the United Kingdom in the period
between that date and the date of the
application under this Act.
(3) Any
filing which in a Convention country is
equivalent to a regular national filing,
under its domestic legislation or an
international agreement, shall be treated
as giving rise to the right of priority.
A "regular
national filing" means a filing
which is adequate to establish the date
on which the application was filed in
that country, whatever may be the
subsequent fate of the application.
(4) A
subsequent application concerning the same
subject as the first Convention
application, filed in the same Convention
country, shall be considered the first
Convention application (of which the
filing date is the starting date of the
period of priority), if at the time of the
subsequent application—
(a) the
previous application has been withdrawn,
abandoned or refused, without having
been laid open to public inspection and
without leaving any rights outstanding,
and
(b) it
has not yet served as a basis for
claiming a right of priority.
The previous
application may not thereafter serve as
a basis for claiming a right of
priority.
(5) Provision
may be made by rules as to the manner of
claiming a right to priority on the basis
of a Convention application.
(6) A right
to priority arising as a result of a
Convention application may be assigned or
otherwise transmitted, either with the
application or independently.
The reference in
subsection (1) to the applicant's
"successor in title" shall be
construed accordingly.
|
Claim to priority from
other relevant overseas application.
|
36.—(1) Her
Majesty may by Order in Council make
provision for conferring on a person who
has duly filed an application for
protection of a trade mark in—
(a) any
of the Channel Islands or a colony, or
(b) a
country or territory in relation to
which Her Majesty's Government in the
United Kingdom have entered into a
treaty, convention, arrangement or
engagement for the reciprocal protection
of trade marks,
a right to priority,
for the purpose of registering the same
trade mark under this Act for some or all
of the same goods or services, for a
specified period from the date of filing
of that application.
(2) An Order
in Council under this section may make
provision corresponding to that made by
section 35 in relation to Convention
countries or such other provision as
appears to Her Majesty to be appropriate.
(3) A
statutory instrument containing an Order
in Council under this section shall be
subject to annulment in pursuance of a
resolution of either House of Parliament. |
| |
Registration procedure |
Examination of application.
|
37.—(1) The
registrar shall examine whether an
application for registration of a trade
mark satisfies the requirements of this
Act (including any requirements imposed by
rules).
(2) For that
purpose he shall carry out a search, to
such extent as he considers necessary, of
earlier trade marks.
(3) If it
appears to the registrar that the
requirements for registration are not met,
he shall inform the applicant and give him
an opportunity, within such period as the
registrar may specify, to make
representations or to amend the
application.
(4) If the
applicant fails to satisfy the registrar
that those requirements are met, or to
amend the application so as to meet them,
or fails to respond before the end of the
specified period, the registrar shall
refuse to accept the application.
(5) If it
appears to the registrar that the
requirements for registration are met, he
shall accept the application. |
Publication, opposition
proceedings and observations.
|
38.—(1) When
an application for registration has been
accepted, the registrar shall cause the
application to be published in the
prescribed manner.
(2) Any
person may, within the prescribed time
from the date of the publication of the
application, give notice to the registrar
of opposition to the registration.
The notice shall
be given in writing in the prescribed
manner, and shall include a statement of
the grounds of opposition.
(3) Where an
application has been published, any person
may, at any time before the registration
of the trade mark, make observations in
writing to the registrar as to whether the
trade mark should be registered; and the
registrar shall inform the applicant of
any such observations.
A person who makes
observations does not thereby become a
party to the proceedings on the
application.
|
Withdrawal, restriction or
amendment of application.
|
39.—(1) The
applicant may at any time withdraw his
application or restrict the goods or
services covered by the application.
If the application
has been published, the withdrawal or
restriction shall also be published.
(2) In other
respects, an application may be amended,
at the request of the applicant, only by
correcting—
(a) the
name or address of the applicant,
(b) errors
of wording or of copying, or
and then only where
the correction does not substantially
affect the identity of the trade mark or
extend the goods or services covered by
the application.
(3) Provision
shall be made by rules for the publication
of any amendment which affects the
representation of the trade mark, or the
goods or services covered by the
application, and for the making of
objections by any person claiming to be
affected by it. |
Registration.
|
40.—(1) Where
an application has been accepted and—
(a) no
notice of opposition is given within the
period referred to in section 38(2), or
(b) all
opposition proceedings are withdrawn or
decided in favour of the applicant,
the registrar shall
register the trade mark, unless it appears
to him having regard to matters coming to
his notice since he accepted the
application that it was accepted in error.
(2) A trade
mark shall not be registered unless any
fee prescribed for the registration is
paid within the prescribed period.
If the fee is not
paid within that period, the application
shall be deemed to be withdrawn.
(3) A trade
mark when registered shall be registered
as of the date of filing of the
application for registration; and that
date shall be deemed for the purposes of
this Act to be the date of registration.
(4) On the
registration of a trade mark the registrar
shall publish the registration in the
prescribed manner and issue to the
applicant a certificate of registration. |
Registration: supplementary
provisions.
|
41.—(1) Provision
may be made by rules as to—
(a) the
division of an application for the
registration of a trade mark into
several applications;
(b) the
merging of separate applications or
registrations;
(c) the
registration of a series of trade marks.
(2) A
series of trade marks means a number of
trade marks which resemble each other as
to their material particulars and differ
only as to matters of a non-distinctive
character not substantially affecting the
identity of the trade mark.
(3) Rules
under this section may include provision
as to—
(a) the
circumstances in which, and conditions
subject to which, division, merger or
registration of a series is permitted,
and
(b) the
purposes for which an application to
which the rules apply is to be treated
as a single application and those for
which it is to be treated as a number of
separate applications.
|
| |
Duration, renewal and alteration of
registered trade mark |
Duration of registration.
|
42.—(1) A
trade mark shall be registered for a
period of ten years from the date of
registration.
(2) Registration
may be renewed in accordance with section
43 for further periods of ten years. |
Renewal of registration.
|
43.—(1) The
registration of a trade mark may be
renewed at the request of the proprietor,
subject to payment of a renewal fee.
(2) Provision
shall be made by rules for the registrar
to inform the proprietor of a registered
trade mark, before the expiry of the
registration, of the date of expiry and
the manner in which the registration may
be renewed.
(3) A request
for renewal must be made, and the renewal
fee paid, before the expiry of the
registration.
Failing this, the
request may be made and the fee paid
within such further period (of not less
than six months) as may be prescribed,
in which case an additional renewal fee
must also be paid within that period.
(4) Renewal
shall take effect from the expiry of the
previous registration.
(5) If the
registration is not renewed in accordance
with the above provisions, the registrar
shall remove the trade mark from the
register.
Provision may be
made by rules for the restoration of the
registration of a trade mark which has
been removed from the register, subject
to such conditions (if any) as may be
prescribed.
(6) The
renewal or restoration of the registration
of a trade mark shall be published in the
prescribed manner. |
Alteration of registered
trade mark.
|
44.—(1) A
registered trade mark shall not be altered
in the register, during the period of
registration or on renewal.
(2) Nevertheless,
the registrar may, at the request of the
proprietor, allow the alteration of a
registered trade mark where the mark
includes the proprietor's name or address
and the alteration is limited to
alteration of that name or address and
does not substantially affect the identity
of the mark.
(3) Provision
shall be made by rules for the publication
of any such alteration and the making of
objections by any person claiming to be
affected by it. |
| |
Surrender, revocation and invalidity |
Surrender of registered
trade mark.
|
45.—(1) A
registered trade mark may be surrendered
by the proprietor in respect of some or
all of the goods or services for which it
is registered.
(2) Provision
may be made by rules—
(a) as
to the manner and effect of a surrender,
and
(b) for
protecting the interests of other
persons having a right in the registered
trade mark.
|
Revocation of registration.
|
46.—(1) The
registration of a trade mark may be
revoked on any of the following grounds—
(a) that
within the period of five years
following the date of completion of the
registration procedure it has not been
put to genuine use in the United
Kingdom, by the proprietor or with his
consent, in relation to the goods or
services for which it is registered, and
there are no proper reasons for non-use;
(b) that
such use has been suspended for an
uninterrupted period of five years, and
there are no proper reasons for non-use;
(c) that,
in consequence of acts or inactivity of
the proprietor, it has become the common
name in the trade for a product or
service for which it is registered;
(d) that
in consequence of the use made of it by
the proprietor or with his consent in
relation to the goods or services for
which it is registered, it is liable to
mislead the public, particularly as to
the nature, quality or geographical
origin of those goods or services.
(2) For
the purposes of subsection (1) use of a
trade mark includes use in a form
differing in elements which do not alter
the distinctive character of the mark in
the form in which it was registered, and
use in the United Kingdom includes
affixing the trade mark to goods or to the
packaging of goods in the United Kingdom
solely for export purposes.
(3) The
registration of a trade mark shall not be
revoked on the ground mentioned in
subsection (1)(a) or (b) if such use as is
referred to in that paragraph is commenced
or resumed after the expiry of the five
year period and before the application for
revocation is made:
Provided that, any
such commencement or resumption of use
after the expiry of the five year period
but within the period of three months
before the making of the application
shall be disregarded unless preparations
for the commencement or resumption began
before the proprietor became aware that
the application might be made.
(4) An
application for revocation may be made by
any person, and may be made either to the
registrar or to the court, except that—
(a) if
proceedings concerning the trade mark in
question are pending in the court, the
application must be made to the court;
and
(b) if
in any other case the application is
made to the registrar, he may at any
stage of the proceedings refer the
application to the court.
(5) Where
grounds for revocation exist in respect of
only some of the goods or services for
which the trade mark is registered,
revocation shall relate to those goods or
services only.
(6) Where the
registration of a trade mark is revoked to
any extent, the rights of the proprietor
shall be deemed to have ceased to that
extent as from—
(a) the
date of the application for revocation,
or
(b) if
the registrar or court is satisfied that
the grounds for revocation existed at an
earlier date, that date.
|
Grounds for invalidity of
registration.
|
47.—(1) The
registration of a trade mark may be
declared invalid on the ground that the
trade mark was registered in breach of
section 3 or any of the provisions
referred to in that section (absolute
grounds for refusal of registration).
Where the trade
mark was registered in breach of
subsection (1)(b), (c) or (d) of that
section, it shall not be declared
invalid if, in consequence of the use
which has been made of it, it has after
registration acquired a distinctive
character in relation to the goods or
services for which it is registered.
(2) The
registration of a trade mark may be
declared invalid on the ground—
(a) that
there is an earlier trade mark in
relation to which the conditions set out
in section 5(1), (2) or (3) obtain, or
(b) that
there is an earlier right in relation to
which the condition set out in section
5(4) is satisfied,
unless the
proprietor of that earlier trade mark or
other earlier right has consented to the
registration.
(3) An
application for a declaration of
invalidity may be made by any person, and
may be made either to the registrar or to
the court, except that—
(a) if
proceedings concerning the trade mark in
question are pending in the court, the
application must be made to the court;
and
(b) if
in any other case the application is
made to the registrar, he may at any
stage of the proceedings refer the
application to the court.
(4) In
the case of bad faith in the registration
of a trade mark, the registrar himself may
apply to the court for a declaration of
the invalidity of the registration.
(5) Where the
grounds of invalidity exist in respect of
only some of the goods or services for
which the trade mark is registered, the
trade mark shall be declared invalid as
regards those goods or services only.
(6) Where the
registration of a trade mark is declared
invalid to any extent, the registration
shall to that extent be deemed never to
have been made:
Provided that this
shall not affect transactions past and
closed.
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Effect of acquiescence.
|
48.—(1) Where
the proprietor of an earlier trade mark or
other earlier right has acquiesced for a
continuous period of five years in the use
of a registered trade mark in the United
Kingdom, being aware of that use, there
shall cease to be any entitlement on the
basis of that earlier trade mark or other
right—
(a) to
apply for a declaration that the
registration of the later trade mark is
invalid, or
(b) to
oppose the use of the later trade mark
in relation to the goods or services in
relation to which it has been so used,
unless the
registration of the later trade mark was
applied for in bad faith.
(2) Where
subsection (1) applies, the proprietor of
the later trade mark is not entitled to
oppose the use of the earlier trade mark
or, as the case may be, the exploitation
of the earlier right, notwithstanding that
the earlier trade mark or right may no
longer be invoked against his later trade
mark. |
| |
Collective marks |
Collective marks.
|
49.—(1) A
collective mark is a mark distinguishing
the goods or services of members of the
association which is the proprietor of the
mark from those of other undertakings.
(2) The
provisions of this Act apply to collective
marks subject to the provisions of
Schedule 1. |
| |
Certification marks |
Certification marks.
|
50.—(1) A
certification mark is a mark indicating
that the goods or services in connection
with which it is used are certified by the
proprietor of the mark in respect of
origin, material, mode of manufacture of
goods or performance of services, quality,
accuracy or other characteristics.
(2) The
provisions of this Act apply to
certification marks subject to the
provisions of Schedule 2. |
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ARRANGEMENT OF SECTIONS - Part II
| |
| Part
II |
| Community
trade marks and international matters |
| Community
trade marks |
| 51. |
Meaning
of "Community trade mark". |
| 52. |
Power
to make provision in connection with
Community Trade Mark Regulation. |
| |
| The
Madrid Protocol: international
registration |
| 53. |
The
Madrid Protocol. |
| 54. |
Power
to make provision giving effect to
Madrid Protocol. |
| |
| The
Paris Convention: supplementary
provisions |
| 55. |
The
Paris Convention. |
| 56. |
Protection
of well-known trade marks: Article 6bis. |
| 57. |
National
emblems, &c. of Convention
countries: Article 6ter. |
| 58. |
Emblems,
&c. of certain international
organisations: Article 6ter. |
| 59. |
Notification
under Article 6ter of the
Convention. |
| 60. |
Acts
of agent or representative: Article 6septies. |
| |
| Miscellaneous |
| 61. |
Stamp
duty. |
| |
| Part
III |
| Administrative
and other supplementary provisions |
| The
registrar |
| 62. |
The
registrar. |
| |
| The
register |
| 63. |
The
register. |
| 64. |
Rectification
or correction of the register. |
| 65. |
Adaptation
of entries to new classification. |
| |
| Powers
and duties of the registrar |
| 66. |
Power
to require use of forms. |
| 67. |
Information
about applications and registered
trade marks. |
| 68. |
Costs
and security for costs. |
| 69. |
Evidence
before registrar. |
| 70. |
Exclusion
of liability in respect of official
acts. |
| 71. |
Registrar's
annual report. |
| |
| Legal
proceedings and appeals |
| 72. |
Registration
to be prima facie evidence of
validity. |
| 73. |
Certificate
of validity of contested registration. |
| 74. |
Registrar's
appearance in proceedings involving
the register. |
| 75. |
The
court. |
| 76. |
Appeals
from the registrar. |
| 77. |
Persons
appointed to hear and determine
appeals. |
| |
| Rules,
fees, hours of business, &c. |
| 78. |
Power
of Secretary of State to make rules. |
| 79. |
Fees. |
| 80. |
Hours
of business and business days. |
| 81. |
The
trade marks journal. |
| |
| Trade
mark agents, &c. |
| 82. |
Recognition
of agents. |
| 83. |
The
register of trade mark agents. |
| 84. |
Unregistered
persons not to be described as
registered trade mark agents. |
| 85. |
Power
to prescribe conditions, &c. for
mixed partnerships and bodies
corporate. |
| 86. |
Use
of the term "trade mark
attorney". |
| 87. |
Privilege
for communications with registered
trade mark agents. |
| 88. |
Power
of registrar to refuse to deal with
certain agents. |
| |
| Importation
of infringing goods, material or
articles |
| 89. |
Infringing
goods, material or articles may be
treated as prohibited goods. |
| 90. |
Power
of Commissioners of Customs and Excise
to make regulations. |
| 91. |
Power
of Commissioners of Customs and Excise
to disclose information. |
| |
| Offences |
| 92. |
Unauthorised
use of trade mark, &c. in relation
to goods. |
| 93. |
Enforcement
function of local weights and measures
authority. |
| 94. |
Falsification
of register, &c. |
| 95. |
Falsely
representing trade mark as registered. |
| 96. |
Supplementary
provisions as to summary proceedings
in Scotland. |
| |
| Forfeiture
of counterfeit goods, &c. |
| 97. |
Forfeiture:
England and Wales or Northern Ireland. |
| 98. |
Forfeiture:
Scotland. |
| |
| Part
IV |
| Miscellaneous
and general provisions |
| Miscellaneous |
| 99. |
Unauthorised
use of Royal arms, &c. |
| 100. |
Burden
of proving use of trade mark. |
| 101. |
Offences
committed by partnerships and bodies
corporate. |
| |
| Interpretation |
| 102. |
Adaptation
of expressions for Scotland. |
| 103. |
Minor
definitions. |
| 104. |
Index
of defined expressions. |
| |
| Other
general provisions |
| 105. |
Transitional
provisions. |
| 106. |
Consequential
amendments and repeals. |
| 107. |
Territorial
waters and the continental shelf. |
| 108. |
Extent. |
| 109. |
Commencement. |
| 110. |
Short
title. |
|
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The
Trademark Act 1994 (UK statute) 