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Legal Guidance - Trade Marks

This Guidance Notice seeks to give information to healers in England on the legislation connected with trademarks.

Please note that I am not a qualified legal practitioner and healers affected by this legislation should seek professional legal advice as appropriate.

Please read the introductory guidance on the legislative process in the United Kingdom and Crown Dependencies before reading this Notice. Click here to go to the introductory guidance.

Chapter 26 of the Trade Marks Act 1994 is reproduced below under the terms of Crown Copyright Policy Guidance issued by

HMSO (Her Majesty’s Stationery Office). Copyright is owned by the Crown and information on reproduction rights may be found on the HMSO website at http://www.opsi.gov.uk/advice/crown-copyright/copyright-guidance/reproduction-of-legislation.htm .

Background

Business names and logos and designs help to create brand images for businesses. They create a focal point for the recognition of a business and although intangible can be valuable business assets.

The legislation which provides the framework within which there can be registration and protection of such assets is the Trade Marks Act 1994 and is reproduced below. Although somewhat lengthy, this piece of legislation is written in fairly straightforward English and is not too difficult to understand. The conditions of reproduction of copyright legislative material require that the full text be reproduced and partial reproduction is not allowed. Full reproduction is below, therefore.

Within the complementary heath sector, awareness of this legal framework is helpful for people who wish to trademark the name of their healing and teaching practice or who wish to protect the name of new services and products which they have developed. It is particularly appropriate to consider application to trademark if a business has some unique product or service or if there is sufficient differentiation between what it offers to customers and that offered by its competitors. Anybody in the sector who wishes to make application to trademark can find details of how to proceed at the Patent Office at http://www.patent.gov.uk

for United Kingdom trademarks and at the Office of Trademarks and Designs at http://oami.europa.eu/ for European Union trademarks.

Practitioners in the complementary health sector need to be aware that it is an offence to use the trademark of another business without permission or licence. They need also to be aware that the legislation also covers the practice of ‘passing off’ whereby names and logos similar to those which are already trademarked are used with the intention that customers will not recognise the difference.

The different sections of the Trade Marks Act 1994 are listed at the beginning of the Act. Each section name has a hyperlink that will take the reader to the relevant part of the text of the Act.

The Copyright, etc. and Trade Marks (Offences and Enforcement) Act 2002 provides further legislation for the enforcement of the Trade Marks Act 1994 but is not reproduced here.

Reproduction of the legislation

Trade Marks Act 1994

1994 Chapter c. 26

ARRANGEMENT OF SECTIONS

Part I
Registered trade marks
Introductory
1.	Trade marks.
2.	Registered trade marks.
Grounds for refusal of registration
3.	Absolute grounds for refusal of registration.
4.	Specially protected emblems.
5.	Relative grounds for refusal of registration.
6.	Meaning of "earlier trade mark".
7.	Raising of relative grounds in case of honest concurrent use.
8.	Power to require that relative grounds be raised in opposition proceedings.
Effects of registered trade mark
9.	Rights conferred by registered trade mark.
10.	Infringement of registered trade mark.
11.	Limits on effect of registered trade mark.
12.	Exhaustion of rights conferred by registered trade mark.
13.	Registration subject to disclaimer or limitation.
Infringement proceedings
14.	Action for infringement.
15.	Order for erasure, &c. of offending sign.
16.	Order for delivery up of infringing goods, material or articles.
17.	Meaning of "infringing goods, material or articles".
18.	Period after which remedy of delivery up not available.
19.	Order as to disposal of infringing goods, material or articles.
20.	Jurisdiction of sheriff court or county court in Northern Ireland.
21.	Remedy for groundless threats of infringement proceedings.
Registered trade mark as object of property
22.	Nature of registered trade mark.
23.	Co-ownership of registered trade mark.
24.	Assignment, &c. of registered trade mark.
25.	Registration of transactions affecting registered trade mark.
26.	Trusts and equities.
27.	Application for registration of trade mark as an object of property.
Licensing
28.	Licensing of registered trade mark.
29.	Exclusive licences.
30.	General provisions as to rights of licensees in case of infringement.
31.	Exclusive licensee having rights and remedies of assignee.
Application for registered trade mark
32.	Application for registration.
33.	Date of filing.
34.	Classification of trade marks.
Priority
35.	Claim to priority of Convention application.
36.	Claim to priority from other relevant overseas application.
Registration procedure
37.	Examination of application.
38.	Publication, opposition proceedings and observations.
39.	Withdrawal, restriction or amendment of application.
40.	Registration.
41.	Registration: supplementary provisions.
Duration, renewal and alteration of registered trade mark
42.	Duration of registration.
43.	Renewal of registration.
44.	Alteration of registered trade mark.
Surrender, revocation and invalidity
45.	Surrender of registered trade mark.
46.	Revocation of registration.
47.	Grounds for invalidity of registration.
48.	Effect of acquiescence.
Collective marks
49.	Collective marks.
Certification marks
50.	Certification marks.
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.

Schedule 1

Collective marks.

Schedule 2

Certification marks.

Schedule 3

Transitional provisions.

Schedule 4

Consequential amendments.

Schedule 5

Repeals and revocations.

	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.
	[21st July 1994]
	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:—
	Part I
	Registered trade marks
	Introductory
Trade marks.	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.	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.
	Grounds for refusal of registration
Absolute grounds for refusal of registration.	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.	4.—(1) A trade mark which consists of or contains—