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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
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1994
Chapter c. 26
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ARRANGEMENT OF SECTIONS
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Part I
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Registered
trade marks
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Introductory
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1.
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Trade marks.
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2.
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Registered
trade marks.
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Grounds
for refusal of registration
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3.
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Absolute
grounds for refusal of registration.
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4.
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Specially
protected emblems.
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5.
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Relative
grounds for refusal of registration.
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6.
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Meaning
of "earlier trade mark".
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7.
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Raising
of relative grounds in case of honest concurrent use.
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8.
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Power
to require that relative grounds be raised in opposition proceedings.
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Effects
of registered trade mark
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9.
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Rights
conferred by registered trade mark.
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10.
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Infringement
of registered trade mark.
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11.
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Limits
on effect of registered trade mark.
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12.
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Exhaustion
of rights conferred by registered trade mark.
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13.
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Registration
subject to disclaimer or limitation.
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Infringement
proceedings
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14.
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Action for
infringement.
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15.
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Order
for erasure, &c. of offending sign.
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16.
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Order
for delivery up of infringing goods, material or articles.
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17.
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Meaning
of "infringing goods, material or articles".
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18.
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Period
after which remedy of delivery up not available.
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19.
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Order
as to disposal of infringing goods, material or articles.
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20.
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Jurisdiction
of sheriff court or county court in Northern Ireland.
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21.
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Remedy
for groundless threats of infringement proceedings.
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Registered
trade mark as object of property
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22.
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Nature
of registered trade mark.
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23.
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Co-ownership
of registered trade mark.
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24.
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Assignment,
&c. of registered trade mark.
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25.
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Registration
of transactions affecting registered trade mark.
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26.
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Trusts and
equities.
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27.
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Application
for registration of trade mark as an object of property.
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Licensing
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28.
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Licensing
of registered trade mark.
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29.
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Exclusive licences.
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30.
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General
provisions as to rights of licensees in case of infringement.
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31.
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Exclusive
licensee having rights and remedies of assignee.
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Application
for registered trade mark
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32.
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Application
for registration.
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33.
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Date of filing.
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34.
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Classification
of trade marks.
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Priority
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35.
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Claim
to priority of Convention application.
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36.
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Claim
to priority from other relevant overseas application.
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Registration
procedure
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37.
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Examination
of application.
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38.
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Publication,
opposition proceedings and observations.
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39.
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Withdrawal,
restriction or amendment of application.
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40.
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Registration.
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41.
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Registration:
supplementary provisions.
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Duration,
renewal and alteration of registered trade mark
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42.
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Duration
of registration.
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43.
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Renewal of
registration.
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44.
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Alteration
of registered trade mark.
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Surrender,
revocation and invalidity
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45.
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Surrender
of registered trade mark.
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46.
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Revocation
of registration.
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47.
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Grounds
for invalidity of registration.
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48.
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Effect of
acquiescence.
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Collective
marks
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49.
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Collective marks.
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Certification
marks
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50.
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Certification
marks.
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Part II
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Community
trade marks and international matters
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Community
trade marks
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51.
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Meaning
of "Community trade mark".
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52.
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Power
to make provision in connection with Community Trade Mark Regulation.
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The Madrid Protocol:
international registration
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53.
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The Madrid
Protocol.
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54.
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Power
to make provision giving effect to Madrid Protocol.
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The Paris Convention:
supplementary provisions
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55.
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The Paris
Convention.
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56.
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Protection
of well-known trade marks: Article 6bis.
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57.
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National
emblems, &c. of Convention countries: Article 6ter.
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58.
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Emblems,
&c. of certain international organisations: Article 6ter.
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59.
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Notification
under Article 6ter of the Convention.
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60.
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Acts
of agent or representative: Article 6septies.
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Miscellaneous
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61.
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Stamp duty.
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Part III
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Administrative
and other supplementary provisions
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The
registrar
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62.
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The registrar.
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The
register
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63.
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The register.
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64.
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Rectification
or correction of the register.
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65.
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Adaptation
of entries to new classification.
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Powers
and duties of the registrar
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66.
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Power
to require use of forms.
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67.
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Information
about applications and registered trade marks.
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68.
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Costs
and security for costs.
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69.
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Evidence
before registrar.
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70.
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Exclusion
of liability in respect of official acts.
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71.
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Registrar's
annual report.
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Legal
proceedings and appeals
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72.
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Registration
to be prima facie evidence of validity.
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73.
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Certificate
of validity of contested registration.
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74.
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Registrar's
appearance in proceedings involving the register.
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75.
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The court.
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76.
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Appeals
from the registrar.
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77.
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Persons
appointed to hear and determine appeals.
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Rules,
fees, hours of business, &c.
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78.
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Power
of Secretary of State to make rules.
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79.
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Fees.
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80.
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Hours
of business and business days.
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81.
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The trade
marks journal.
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Trade
mark agents, &c.
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82.
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Recognition
of agents.
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83.
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The
register of trade mark agents.
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84.
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Unregistered
persons not to be described as registered trade mark agents.
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85.
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Power
to prescribe conditions, &c. for mixed partnerships and bodies
corporate.
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86.
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Use
of the term "trade mark attorney".
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87.
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Privilege
for communications with registered trade mark agents.
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88.
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Power
of registrar to refuse to deal with certain agents.
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Importation
of infringing goods, material or articles
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89.
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Infringing
goods, material or articles may be treated as prohibited goods.
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90.
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Power
of Commissioners of Customs and Excise to make regulations.
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91.
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Power
of Commissioners of Customs and Excise to disclose information.
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Offences
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92.
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Unauthorised use of trade mark, &c. in relation
to goods.
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93.
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Enforcement
function of local weights and measures authority.
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94.
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Falsification
of register, &c.
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95.
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Falsely
representing trade mark as registered.
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96.
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Supplementary
provisions as to summary proceedings in Scotland.
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Forfeiture
of counterfeit goods, &c.
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97.
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Forfeiture:
England and Wales or Northern Ireland.
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98.
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Forfeiture:
Scotland.
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Part IV
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Miscellaneous
and general provisions
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Miscellaneous
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99.
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Unauthorised use of Royal arms, &c.
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100.
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Burden
of proving use of trade mark.
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101.
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Offences
committed by partnerships and bodies corporate.
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Interpretation
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102.
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Adaptation
of expressions for Scotland.
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103.
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Minor
definitions.
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104.
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Index
of defined expressions.
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Other
general provisions
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105.
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Transitional
provisions.
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106.
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Consequential
amendments and repeals.
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107.
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Territorial
waters and the continental shelf.
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108.
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Extent.
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109.
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Commencement.
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110.
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Short title.
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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.
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[21st July 1994]
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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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Part I
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Registered trade marks
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Introductory
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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).
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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
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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.
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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.
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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.
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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.
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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
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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).
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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
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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.
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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.
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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.
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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).
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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.
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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.
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Registered trade
mark as object of property
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Nature of
registered trade mark.
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22. A
registered trade mark is personal property (in Scotland, incorporeal moveable
property).
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Co-ownership of
registered trade mark.
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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.
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Assignment,
&c. of registered trade mark.
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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.
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Registration of
transactions affecting registered trade mark.
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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.
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Trusts and
equities.
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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.
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Application for
registration of trade mark as an object of property.
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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.
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Licensing
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Licensing of
registered trade mark.
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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.
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Exclusive licences.
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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.
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General
provisions as to rights of licensees in case of infringement.
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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—
(a) refuses to do so, or
(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.
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Exclusive
licensee having rights and remedies of assignee.
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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.
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Application for
registered trade mark
|
Application for
registration.
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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.
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Date of filing.
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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.
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Classification of
trade marks.
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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.
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Priority
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Claim to priority
of Convention application.
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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.
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Claim to priority
from other relevant overseas application.
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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.
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Registration
procedure
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Examination of
application.
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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.
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Publication,
opposition proceedings and observations.
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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.
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Withdrawal,
restriction or amendment of application.
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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
(c) obvious mistakes,
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.
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Registration.
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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.
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Registration:
supplementary provisions.
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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.
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Duration, renewal
and alteration of registered trade mark
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Duration of
registration.
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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.
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Renewal of
registration.
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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.
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Alteration of
registered trade mark.
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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.
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Surrender,
revocation and invalidity
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Surrender of registered trade mark.
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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.
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Revocation of
registration.
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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.
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Grounds for
invalidity of registration.
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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.
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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.
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Collective marks
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Collective marks.
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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.
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Certification marks
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Certification marks.
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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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Part III
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Community trade marks
and international matters
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Community trade
marks
|
Meaning of "Community trade mark".
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51. In
this Act—
"Community trade mark" has the meaning
given by Article 1(1) of the Community Trade Mark Regulation; and
"the Community Trade Mark Regulation"
means [O.J. No. L11, 14.1.94, p.1.] Council Regulation (EC) No. 40/94 of
20th December 1993 on the Community trade mark.
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Power to make
provision in connection with Community Trade Mark Regulation.
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52.—(1) The
Secretary of State may by regulations make such provision as he considers
appropriate in connection with the operation of the Community Trade Mark
Regulation.
(2) Provision may, in particular, be made with
respect to—
(a) the making of applications for
Community trade marks by way of the Patent Office;
(b) the procedures for determining a
posteriori the invalidity, or liability to revocation, of the
registration of a trade mark from which a Community trade mark claims
seniority;
(c) the conversion of a Community trade
mark, or an application for a Community trade mark, into an application for
registration under this Act;
(d) the designation of courts in the United Kingdom
having jurisdiction over proceedings arising out of the Community Trade
Mark Regulation.
(3) Without prejudice
to the generality of subsection (1), provision may be made by regulations
under this section—
(a) applying in relation to a Community
trade mark the provisions of—
(i) section
21 (remedy for groundless threats of infringement proceedings);
(ii) sections 89 to 91 (importation of
infringing goods, material or articles); and
(iii) sections 92, 93, 95 and 96
(offences); and
(b) making in relation to the list of
professional representatives maintained in pursuance of Article 89 of the
Community Trade Mark Regulation, and persons on that list, provision
corresponding to that made by, or capable of being made under, sections 84
to 88 in relation to the register of trade mark agents and registered trade
mark agents.
(4) Regulations under
this section shall be made by statutory instrument which shall be subject
to annulment in pursuance of a resolution of either House of Parliament.
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The Madrid Protocol:
international registration
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The Madrid Protocol.
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53. In
this Act—
"the Madrid
Protocol" means the Protocol relating to the Madrid
Agreement concerning the International Registration of Marks, adopted at Madrid on 27th June
1989;
"the International Bureau" has the
meaning given by Article 2(1) of that Protocol; and
"international trade mark (UK)" means a trade mark which is
entitled to protection in the United Kingdom under that
Protocol.
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Power to make provision giving effect to Madrid Protocol.
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54.—(1) The
Secretary of State may by order make such provision as he thinks fit for
giving effect in the United Kingdom to the provisions of the Madrid
Protocol.
(2) Provision may, in particular, be made with
respect to—
(a) the making of applications for
international registrations by way of the Patent Office as office of
origin;
(b) the procedures to be followed where
the basic United Kingdom
application or registration fails or ceases to be in force;
(c) the procedures to be followed where
the Patent Office receives from the International Bureau a request for
extension of protection to the United Kingdom;
(d) the effects of a successful request
for extension of protection to the United Kingdom;
(e) the transformation of an
application for an international registration, or an international
registration, into a national application for registration;
(f) the communication of information to
the International Bureau;
(g) the payment of fees and amounts
prescribed in respect of applications for international registrations,
extensions of protection and renewals.
(3) Without prejudice
to the generality of subsection (1), provision may be made by regulations
under this section applying in relation to an international trade mark (UK)
the provisions of—
(a) section 21 (remedy for groundless
threats of infringement proceedings);
(b) sections 89 to 91 (importation of
infringing goods, material or articles); and
(c) sections 92, 93, 95 and 96
(offences).
(4) An order under
this section shall be made by statutory instrument which shall be subject
to annulment in pursuance of a resolution of either House of Parliament.
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The Paris Convention:
supplementary provisions
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The Paris Convention.
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55.—(1) In
this Act—
(a) "the Paris
Convention" means the Paris
Convention for the Protection of Industrial Property of March 20th 1883, as
revised or amended from time to time, and
(b) a "Convention country"
means a country, other than the United Kingdom, which is a
party to that Convention.
(2) The Secretary of
State may by order make such amendments of this Act, and rules made under
this Act, as appear to him appropriate in consequence of any revision or
amendment of the Paris
Convention after the passing of this Act.
(3) Any such order shall be made by statutory
instrument which shall be subject to annulment in pursuance of a resolution
of either House of Parliament.
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Protection of
well-known trade marks: Article 6bis.
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56.—(1) References
in this Act to a trade mark which is entitled to protection under the Paris
Convention as a well known trade mark are to a mark which is well-known in
the United Kingdom as being the mark of a person who—
(a) is a national of a Convention
country, or
(b) is domiciled in, or has a real and
effective industrial or commercial establishment in, a Convention country,
whether or not that person carries on business, or
has any goodwill, in the United
Kingdom.
References to the proprietor of such a mark shall
be construed accordingly.
(2) The proprietor of a trade mark which is
entitled to protection under the Paris Convention as a well known trade
mark is entitled to restrain by injunction the use in the United Kingdom of
a trade mark which, or the essential part of which, is identical or similar
to his mark, in relation to identical or similar goods or services, where
the use is likely to cause confusion.
This right is subject to section 48 (effect of
acquiescence by proprietor of earlier trade mark).
(3) Nothing in subsection (2) affects the
continuation of any bona fide use of a trade mark begun before the
commencement of this section.
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National emblems,
&c. of Convention countries: Article 6ter.
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57.—(1) A
trade mark which consists of or contains the flag of a Convention country
shall not be registered without the authorisation
of the competent authorities of that country, unless it appears to the
registrar that use of the flag in the manner proposed is permitted without
such authorisation.
(2) A trade mark which consists of or contains
the armorial bearings or any other state emblem of a Convention country
which is protected under the Paris
Convention shall not be registered without the authorisation
of the competent authorities of that country.
(3) A trade mark which consists of or contains
an official sign or hallmark adopted by a Convention country and indicating
control and warranty shall not, where the sign or hallmark is protected
under the Paris Convention, be registered in relation to goods or services
of the same, or a similar kind, as those in relation to which it indicates
control and warranty, without the authorisation
of the competent authorities of the country concerned.
(4) The provisions of this section as to
national flags and other state emblems, and official signs or hallmarks,
apply equally to anything which from a heraldic point of view imitates any
such flag or other emblem, or sign or hallmark.
(5) Nothing in this section prevents the
registration of a trade mark on the application of a national of a country
who is authorised to make use of a state emblem,
or official sign or hallmark, of that country, notwithstanding that it is
similar to that of another country.
(6) Where by virtue of this section the authorisation of the competent authorities of a
Convention country is or would be required for the registration of a trade
mark, those authorities are entitled to restrain by injunction any use of
the mark in the United Kingdom without their authorisation.
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Emblems, &c.
of certain international organisations: Article 6ter.
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58.—(1) This
section applies to—
(a) the armorial bearings, flags or
other emblems, and
(b) the abbreviations and names,
of international intergovernmental organisations
of which one or more Convention countries are members.
(2) A trade mark which consists of or contains
any such emblem, abbreviation or name which is protected under the Paris
Convention shall not be registered without the authorisation
of the international organisation concerned, unless it appears to the
registrar that the use of the emblem, abbreviation or name in the manner
proposed—
(a) is not such as to suggest to the
public that a connection exists between the organisation and the trade
mark, or
(b) is not likely to mislead the public
as to the existence of a connection between the user and the organisation.
(3) The provisions of
this section as to emblems of an international organisation apply equally
to anything which from a heraldic point of view imitates any such emblem.
(4) Where by virtue of this section the authorisation of an international organisation is or
would be required for the registration of a trade mark, that organisation
is entitled to restrain by injunction any use of the mark in the United
Kingdom without its authorisation.
(5) Nothing in this section affects the rights
of a person whose bona fide use of the trade mark in question began
before 4th January 1962 (when the relevant provisions of the Paris Convention entered into force in relation to the
United Kingdom).
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Notification under Article 6ter of the Convention.
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59.—(1) For
the purposes of section 57 state emblems of a Convention country (other
than the national flag), and official signs or hallmarks, shall be regarded
as protected under the Paris
Convention only if, or to the extent that—
(a) the country in question has
notified the United
Kingdom in accordance with Article 6ter(3)
of the Convention that it desires to protect that emblem, sign or hallmark,
(b) the notification remains in force,
and
(c) the United Kingdom has not objected
to it in accordance with Article 6ter(4) or any such objection has
been withdrawn.
(2) For the purposes
of section 58 the emblems, abbreviations and names of an international
organisation shall be regarded as protected under the Paris Convention only if, or to the
extent that—
(a) the organisation in question has
notified the United
Kingdom in accordance with Article 6ter(3)
of the Convention that it desires to protect that emblem, abbreviation or
name,
(b) the notification remains in force,
and
(c) the United Kingdom has not objected
to it in accordance with Article 6ter(4) or any such objection has
been withdrawn.
(3) Notification
under Article 6ter(3) of the Paris Convention shall have effect only
in relation to applications for registration made more than two months
after the receipt of the notification.
(4) The registrar shall keep and make
available for public inspection by any person, at all reasonable hours and
free of charge, a list of—
(a) the state emblems and official
signs or hallmarks, and
(b) the emblems, abbreviations and
names of international organisations,
which are for the time being protected under the Paris Convention by
virtue of notification under Article 6ter(3).
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Acts of agent or
representative: Article 6septies.
|
60.—(1) The
following provisions apply where an application for registration of a trade
mark is made by a person who is an agent or representative of a person who
is the proprietor of the mark in a Convention country.
(2) If the proprietor opposes the application,
registration shall be refused.
(3) If the application (not being so opposed)
is granted, the proprietor may—
(a) apply for a declaration of the
invalidity of the registration, or
(b) apply for the rectification of the
register so as to substitute his name as the proprietor of the registered
trade mark.
(4) The proprietor
may (notwithstanding the rights conferred by this Act in relation to a
registered trade mark) by injunction restrain any use of the trade mark in
the United Kingdom
which is not authorised by him.
(5) Subsections (2), (3) and (4) do not apply
if, or to the extent that, the agent or representative justifies his
action.
(6) An application under subsection (3)(a) or
(b) must be made within three years of the proprietor becoming aware of the
registration; and no injunction shall be granted under subsection (4) in
respect of a use in which the proprietor has acquiesced for a continuous
period of three years or more.
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Miscellaneous
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Stamp duty.
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61. Stamp
duty shall not be chargeable on an instrument relating to a Community trade
mark or an international trade mark (UK),
or an application for any such mark, by reason only of the fact that such a
mark has legal effect in the United Kingdom.
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Part IIIII
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Administrative and
other supplementary provisions
|
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The registrar
|
The registrar.
|
62. In
this Act "the registrar" means the Comptroller-General of
Patents, Designs and Trade Marks.
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The register
|
The register.
|
63.—(1) The
registrar shall maintain a register of trade marks.
References in this Act to "the register"
are to that register; and references to registration (in particular, in the
expression "registered trade mark") are, unless the context
otherwise requires, to registration in that register.
(2) There shall be entered in the register in
accordance with this Act—
(a) registered trade marks,
(b) such particulars as may be
prescribed of registrable transactions affecting
a registered trade mark, and
(c) such other matters relating to
registered trade marks as may be prescribed.
(3) The register
shall be kept in such manner as may be prescribed, and provision shall in
particular be made for—
(a) public inspection of the register,
and
(b) the supply of certified or
uncertified copies, or extracts, of entries in the register.
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Rectification or
correction of the register.
|
64.—(1) Any
person having a sufficient interest may apply for the rectification of an
error or omission in the register:
Provided that an application for rectification may
not be made in respect of a matter affecting the validity of the
registration of a trade mark.
(2) An application
for rectification 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.
(3) Except where the
registrar or the court directs otherwise, the effect of rectification of
the register is that the error or omission in question shall be deemed
never to have been made.
(4) The registrar may, on request made in the
prescribed manner by the proprietor of a registered trade mark, or a
licensee, enter any change in his name or address as recorded in the
register.
(5) The registrar may remove from the register
matter appearing to him to have ceased to have effect.
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Adaptation of
entries to new classification.
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65.—(1) Provision
may be made by rules empowering the registrar to do such things as he
considers necessary to implement any amended or substituted classification
of goods or services for the purposes of the registration of trade marks.
(2) Provision may in particular be made for
the amendment of existing entries on the register so as to accord with the
new classification.
(3) Any such power of amendment shall not be
exercised so as to extend the rights conferred by the registration, except
where it appears to the registrar that compliance with this requirement
would involve undue complexity and that any extension would not be
substantial and would not adversely affect the rights of any person.
(4) The rules may empower the registrar—
(a) to require the proprietor of a registered
trade mark, within such time as may be prescribed, to file a proposal for
amendment of the register, and
(b) to cancel or refuse to renew the
registration of the trade mark in the event of his failing to do so.
(5) Any such proposal
shall be advertised, and may be opposed, in such manner as may be
prescribed.
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Powers and duties
of the registrar
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Power to require use of forms.
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66.—(1) The
registrar may require the use of such forms as he may direct for any
purpose relating to the registration of a trade mark or any other
proceeding before him under this Act.
(2) The forms, and any directions of the
registrar with respect to their use, shall be published in the prescribed
manner.
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Information about
applications and registered trade marks.
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67.—(1) After
publication of an application for registration of a trade mark, the
registrar shall on request provide a person with such information and
permit him to inspect such documents relating to the application, or to any
registered trade mark resulting from it, as may be specified in the
request, subject, however, to any prescribed restrictions.
Any request must be made in the prescribed manner
and be accompanied by the appropriate fee (if any).
(2) Before publication of an application for
registration of a trade mark, documents or information constituting or
relating to the application shall not be published by the registrar or
communicated by him to any person except—
(a) in such cases and to such extent as
may be prescribed, or
(b) with the consent of the applicant;
but subject as follows.
(3) Where a person has been notified that an
application for registration of a trade mark has been made, and that the
applicant will if the application is granted bring proceedings against him
in respect of acts done after publication of the application, he may make a
request under subsection (1) notwithstanding that the application has not
been published and that subsection shall apply accordingly.
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Costs and
security for costs.
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68.—(1) Provision
may be made by rules empowering the registrar, in any proceedings before
him under this Act—
(a) to award any party such costs as he
may consider reasonable, and
(b) to direct how and by what parties
they are to be paid.
(2) Any such order of
the registrar may be enforced—
(a) in England
and Wales or Northern Ireland,
in the same way as an order of the High Court;
(b) in Scotland, in the same way as a
decree for expenses granted by the Court of Session.
(3) Provision may be
made by rules empowering the registrar, in such cases as may be prescribed,
to require a party to proceedings before him to give security for costs, in
relation to those proceedings or to proceedings on appeal, and as to the
consequences if security is not given.
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Evidence before
registrar.
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69. Provision
may be made by rules—
(a) as to the giving of evidence in
proceedings before the registrar under this Act by affidavit or statutory
declaration;
(b) conferring on the registrar the
powers of an official referee of the Supreme Court as regards the
examination of witnesses on oath and the discovery and production of
documents; and
(c) applying in relation to the
attendance of witnesses in proceedings before the registrar the rules
applicable to the attendance of witnesses before such a referee.
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Exclusion of
liability in respect of official acts.
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70.—(1) The
registrar shall not be taken to warrant the validity of the registration of
a trade mark under this Act or under any treaty, convention, arrangement or
engagement to which the United
Kingdom is a party.
(2) The registrar is not subject to any
liability by reason of, or in connection with, any examination required or authorised by this Act, or any such treaty, convention,
arrangement or engagement, or any report or other proceedings consequent on
such examination.
(3) No proceedings lie against an officer of
the registrar in respect of any matter for which, by virtue of this
section, the registrar is not liable.
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Registrar's
annual report.
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71.—(1) The
Comptroller-General of Patents, Designs and Trade Marks shall in his annual
report under section 121 of the [1977 c. 37.] Patents Act 1977,
include a report on the execution of this Act, including the discharge of
his functions under the Madrid
Protocol.
(2) The report shall include an account of all
money received and paid by him under or by virtue of this Act.
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Legal proceedings
and appeals
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Registration to
be prima facie evidence of validity.
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72. In
all legal proceedings relating to a registered trade mark (including
proceedings for rectification of the register) the registration of a person
as proprietor of a trade mark shall be prima facie evidence of the validity
of the original registration and of any subsequent assignment or other
transmission of it.
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Certificate of
validity of contested registration.
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73.—(1) If
in proceedings before the court the validity of the registration of a trade
mark is contested and it is found by the court that the trade mark is
validly registered, the court may give a certificate to that effect.
(2) If the court gives such a certificate and
in subsequent proceedings—
(a) the validity of the registration is
again questioned, and
(b) the proprietor obtains a final
order or judgment in his favour,
he is entitled to his costs as between solicitor
and client unless the court directs otherwise.
This subsection does not extend to the costs of an
appeal in any such proceedings.
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Registrar's
appearance in proceedings involving the register.
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74.—(1) In
proceedings before the court involving an application for—
(a) the revocation of the registration
of a trade mark,
(b) a declaration of the invalidity of
the registration of a trade mark, or
(c) the rectification of the register,
the registrar is entitled to appear and be heard,
and shall appear if so directed by the court.
(2) Unless otherwise directed by the court,
the registrar may instead of appearing submit to the court a statement in
writing signed by him, giving particulars of—
(a) any proceedings before him in
relation to the matter in issue,
(b) the grounds of any decision given
by him affecting it,
(c) the practice of the Patent Office
in like cases, or
(d) such matters relevant to the issues
and within his knowledge as registrar as he thinks fit;
and the statement shall be deemed to form part of
the evidence in the proceedings.
(3) Anything which the registrar is or may be authorised or required to do under this section may be
done on his behalf by a duly authorised officer.
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The court.
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75. In
this Act, unless the context otherwise requires, "the court"
means—
(a) in England
and Wales and Northern Ireland,
the High Court, and
(b) in Scotland, the Court of Session.
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Appeals from the
registrar.
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76.—(1) An
appeal lies from any decision of the registrar under this Act, except as
otherwise expressly provided by rules.
For this purpose "decision" includes any
act of the registrar in exercise of a discretion vested in him by or under
this Act.
(2) Any such appeal may be brought either to
an appointed person or to the court.
(3) Where an appeal is made to an appointed
person, he may refer the appeal to the court if—
(a) it appears to him that a point of
general legal importance is involved,
(b) the registrar requests that it be
so referred, or
(c) such a request is made by any party
to the proceedings before the registrar in which the decision appealed
against was made.
Before doing so the appointed person shall give
the appellant and any other party to the appeal an opportunity to make
representations as to whether the appeal should be referred to the court.
(4) Where an appeal is made to an appointed
person and he does not refer it to the court, he shall hear and determine
the appeal and his decision shall be final.
(5) The provisions of sections 68 and 69
(costs and security for costs; evidence) apply in relation to proceedings
before an appointed person as in relation to proceedings before the
registrar.
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Persons appointed
to hear and determine appeals.
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77.—(1) For
the purposes of section 76 an "appointed person" means a person
appointed by the Lord Chancellor to hear and decide appeals under this Act.
(2) A person is not eligible for such
appointment unless—
(a) he has a 7 year general
qualification, within the meaning of section 71 of the [1990 c. 41.]
Courts and Legal Services Act 1990;
(b) he is an advocate or solicitor in Scotland
of at least 7 years' standing;
(c) he is a member of the Bar of
Northern Ireland or solicitor of the Supreme Court of Northern Ireland of
at least 7 years' standing; or
(d) he has held judicial office.
(3) An appointed
person shall hold and vacate office in accordance with his terms of
appointment, subject to the following provisions—
(a) there shall be paid to him such
remuneration (whether by way of salary or fees), and such allowances, as
the Secretary of State with the approval of the Treasury may determine;
(b) he may resign his office by notice
in writing to the Lord Chancellor;
(c) the Lord Chancellor may by notice
in writing remove him from office if—
(i) he has
become bankrupt or made an arrangement with his creditors or, in Scotland,
his estate has been sequestrated or he has executed a trust deed for his
creditors or entered into a composition contract, or
(ii) he is incapacitated by physical or
mental illness,
or if he is in the opinion of the Lord Chancellor
otherwise unable or unfit to perform his duties as an appointed person.
(4) The Lord
Chancellor shall consult the Lord Advocate before exercising his powers
under this section.
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Rules, fees, hours
of business, &c.
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Power of
Secretary of State to make rules.
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78.—(1) The
Secretary of State may make rules—
(a) for the purposes of any provision
of this Act authorising the making of rules with
respect to any matter, and
(b) for prescribing anything authorised or required by any provision of this Act to
be prescribed,
and generally for regulating practice and
procedure under this Act.
(2) Provision may, in particular, be made—
(a) as to the manner of filing of
applications and other documents;
(b) requiring and regulating the
translation of documents and the filing and authentication of any
translation;
(c) as to the service of documents;
(d) authorising
the rectification of irregularities of procedure;
(e) prescribing time limits for
anything required to be done in connection with any proceeding under this
Act;
(f) providing for the extension of any
time limit so prescribed, or specified by the registrar, whether or not it
has already expired.
(3) Rules under this
Act shall be made by statutory instrument which shall be subject to
annulment in pursuance of a resolution of either House of Parliament.
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Fees.
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79.—(1) There
shall be paid in respect of applications and registration and other matters
under this Act such fees as may be prescribed.
(2) Provision may be made by rules as to—
(a) the payment of a single fee in
respect of two or more matters, and
(b) the circumstances (if any) in which
a fee may be repaid or remitted.
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Hours of business
and business days.
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80.—(1) The
registrar may give directions specifying the hours of business of the
Patent Office for the purpose of the transaction by the public of business
under this Act, and the days which are business days for that purpose.
(2) Business done on any day after the
specified hours of business, or on a day which is not a business day, shall
be deemed to have been done on the next business day; and where the time
for doing anything under this Act expires on a day which is not a business
day, that time shall be extended to the next business day.
(3) Directions under this section may make
different provision for different classes of business and shall be
published in the prescribed manner.
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The trade marks
journal.
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81. Provision
shall be made by rules for the publication by the registrar of a journal
containing particulars of any application for the registration of a trade
mark (including a representation of the mark) and such other information
relating to trade marks as the registrar thinks fit.
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Trade mark agents
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Recognition of
agents.
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82. Except
as otherwise provided by rules, any act required or authorised
by this Act to be done by or to a person in connection with the
registration of a trade mark, or any procedure relating to a registered
trade mark, may be done by or to an agent authorised
by that person orally or in writing.
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The register of
trade mark agents.
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83.—(1) The
Secretary of State may make rules requiring the keeping of a register of
persons who act as agent for others for the purpose of applying for or
obtaining the registration of trade marks; and in this Act a
"registered trade mark agent" means a person whose name is
entered in the register kept under this section.
(2) The rules may contain such provision as
the Secretary of State thinks fit regulating the registration of persons,
and may in particular—
(a) require the payment of such fees as
may be prescribed, and
(b) authorise
in prescribed cases the erasure from the register of the name of any person
registered in it, or the suspension of a person's registration.
(3) The rules may
delegate the keeping of the register to another person, and may confer on
that person—
(a) power to make regulations—
(i) with
respect to the payment of fees, in the cases and subject to the limits
prescribed by the rules, and
(ii) with respect to any other matter
which could be regulated by the rules, and
(b) such other functions, including
disciplinary functions, as may be prescribed by the rules.
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Unregistered
persons not to be described as registered trade mark agents.
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84.—(1) An
individual who is not a registered trade mark agent shall not—
(a) carry on a business (otherwise than
in partnership) under any name or other description which contains the
words "registered trade mark agent" or
(b) in the course of a business
otherwise describe or hold himself out, or permit himself to be described
or held out, as a registered trade mark agent.
(2) A partnership
shall not—
(a) carry on a business under any name
or other description which contains the words "registered trade mark
agent" or
(b) in the course of a business
otherwise describe or hold itself out, or permit itself to be described or
held out, as a firm of registered trade mark agents,
unless all the partners are registered trade mark
agents or the partnership satisfies such conditions as may be prescribed
for the purposes of this section.
(3) A body corporate shall not—
(a) carry on a business (otherwise than
in partnership) under any name or other description which contains the
words "registered trade mark agent" or
(b) in the course of a business
otherwise describe or hold itself out, or permit itself to be described or
held out, as a registered trade mark agent,
unless all the directors of the body corporate are
registered trade mark agents or the body satisfies such conditions as may
be prescribed for the purposes of this section.
(4) A person who contravenes this section
commits an offence and is liable on summary conviction to a fine not
exceeding level 5 on the standard scale; and proceedings for such an
offence may be begun at any time within a year from the date of the
offence.
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Power to
prescribe conditions, &c. for mixed partnerships and bodies corporate.
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85.—(1) The
Secretary of State may make rules prescribing the conditions to be
satisfied for the purposes of section 84 (persons entitled to be described
as registered trade mark agents)—
(a) in relation to a partnership where
not all the partners are qualified persons, or
(b) in relation to a body corporate where
not all the directors are qualified persons,
and imposing requirements to be complied with by
such partnerships or bodies corporate.
(2) The rules may, in particular—
(a) prescribe conditions as to the
number or proportion of partners or directors who must be qualified
persons;
(b) impose requirements as to—
(i) the
identification of qualified and unqualified persons in professional
advertisements, circulars or letters issued by or with the consent of the
partnership or body corporate and which relate to its business, and
(ii) the manner in which a partnership
or body corporate is to organise its affairs so
as to secure that qualified persons exercise a sufficient degree of control
over the activities of unqualified persons.
(3) Contravention of
a requirement imposed by the rules is an offence for which a person is
liable on summary conviction to a fine not exceeding level 5 on the
standard scale.
(4) In this section "qualified
person" means a registered trade mark agent.
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Use of the term
"trade mark attorney".
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86.—(1) No
offence is committed under the enactments restricting the use of certain
expressions in reference to persons not qualified to act as solicitors by
the use of the term "trade mark attorney" in reference to a
registered trade mark agent.
(2) The enactments referred to in subsection
(1) are section 21 of the [1974 c. 47. S.I. 1976/582 (N.I. 12)]
Solicitors Act 1974, section 31 of the [1980 c. 46.] Solicitors (Scotland) Act 1980 and Article 22 of the
Solicitors (Northern
Ireland) Order 1976.
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Privilege for
communications with registered trade mark agents.
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87.—(1) This
section applies to communications as to any matter relating to the
protection of any design or trade mark, or as to any matter involving
passing off.
(2) Any such communication—
(a) between a person and his trade mark
agent, or
(b) for the purpose of obtaining, or in
response to a request for, information which a person is seeking for the
purpose of instructing his trade mark agent,
is privileged from, or in Scotland protected
against, disclosure in legal proceedings in the same way as a communication
between a person and his solicitor or, as the case may be, a communication
for the purpose of obtaining, or in response to a request for, information
which a person is seeking for the purpose of instructing his solicitor.
(3) In subsection (2) "trade mark
agent" means—
(a) a registered trade mark agent, or
(b) a partnership entitled to describe
itself as a firm of registered trade mark agents, or
(c) a body corporate entitled to
describe itself as a registered trade mark agent.
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Power of
registrar to refuse to deal with certain agents.
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88.—(1) The
Secretary of State may make rules authorising the
registrar to refuse to recognise as agent in
respect of any business under this Act—
(a) a person who has been convicted of
an offence under section 84 (unregistered persons describing themselves as
registered trade mark agents);
(b) an individual whose name has been erased
from and not restored to, or who is suspended from, the register of trade
mark agents on the ground of misconduct;
(c) a person who is found by the
Secretary of State to have been guilty of such conduct as would, in the
case of an individual registered in the register of trade mark agents,
render him liable to have his name erased from the register on the ground
of misconduct;
(d) a partnership or body corporate of
which one of the partners or directors is a person whom the registrar could
refuse to recognise under paragraph (a), (b) or
(c) above.
(2) The rules may
contain such incidental and supplementary provisions as appear to the
Secretary of State to be appropriate and may, in particular, prescribe
circumstances in which a person is or is not to be taken to have been
guilty of misconduct.
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Importation of
infringing goods, material or articles
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Infringing goods,
material or articles may be treated as prohibited goods.
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89.—(1) The
proprietor of a registered trade mark, or a licensee, may give notice in
writing to the Commissioners of Customs and Excise—
(a) that he is the proprietor or, as
the case may be, a licensee of the registered trade mark,
(b) that, at a time and place specified
in the notice, goods which are, in relation to that registered trade mark,
infringing goods, material or articles are expected to arrive in the United Kingdom—
(i) from
outside the European Economic Area, or
(ii) from within that Area but not
having been entered for free circulation, and
(c) that he requests the Commissioners
to treat them as prohibited goods.
(2) When a notice is
in force under this section the importation of the goods to which the
notice relates, otherwise than by a person for his private and domestic
use, is prohibited; but a person is not by reason of the prohibition liable
to any penalty other than forfeiture of the goods.
(3) This section does not apply to goods
entered, or expected to be entered, for free circulation in respect of
which the proprietor of the registered trade mark, or a licensee, is
entitled to lodge an application under Article 3(1) of [O.J. No. L357,
18.12.86, p.1.] Council Regulation (EEC) No. 3842/86 laying down measures
to prohibit the release for free circulation of counterfeit goods.
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Power of
Commissioners of Customs and Excise to make regulations.
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90.—(1) The
Commissioners of Customs and Excise may make regulations prescribing the
form in which notice is to be given under section 89 and requiring a person
giving notice—
(a) to furnish the Commissioners with
such evidence as may be specified in the regulations, either on giving
notice or when the goods are imported, or at both those times, and
(b) to comply with such other
conditions as may be specified in the regulations.
(2) The regulations
may, in particular, require a person giving such a notice—
(a) to pay such fees in respect of the
notice as may be specified by the regulations;
(b) to give such security as may be so
specified in respect of any liability or expense which the Commissioners
may incur in consequence of the notice by reason of the detention of any
goods or anything done to goods detained;
(c) to indemnify the Commissioners
against any such liability or expense, whether security has been given or
not.
(3) The regulations
may make different provision as respects different classes of case to which
they apply and may include such incidental and supplementary provisions as
the Commissioners consider expedient.
(4) Regulations under this section shall be
made by statutory instrument which shall be subject to annulment in
pursuance of a resolution of either House of Parliament.
(5) Section 17 of the [1979 c. 2.]
Customs and Excise Management Act 1979 (general provisions as to
Commissioners' receipts) applies to fees paid in pursuance of regulations
under this section as to receipts under the enactments relating to customs
and excise.
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Power of
Commissioners of Customs and Excise to disclose information.
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91. Where
information relating to infringing goods, material or articles has been
obtained by the Commissioners of Customs and Excise for the purposes of, or
in connection with, the exercise of their functions in relation to imported
goods, the Commissioners may authorise the
disclosure of that information for the purpose of facilitating the exercise
by any person of any function in connection with the investigation or
prosecution of an offence under section 92 below (unauthorised
use of trade mark, &c. in relation to goods) or under the [1968
c. 29.] Trade Descriptions Act 1968.
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Offences
|
Unauthorised use of trade mark, &c.
in relation to goods.
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92.—(1) A
person commits an offence who with a view to gain for himself or another,
or with intent to cause loss to another, and without the consent of the
proprietor—
(a) applies to goods or their packaging
a sign identical to, or likely to be mistaken for, a registered trade mark,
or
(b) sells or lets for hire, offers or
exposes for sale or hire or distributes goods which bear, or the packaging
of which bears, such a sign, or
(c) has in his possession, custody or
control in the course of a business any such goods with a view to the doing
of anything, by himself or another, which would be an offence under
paragraph (b).
(2) A person commits
an offence who with a view to gain for himself or another, or with intent
to cause loss to another, and without the consent of the proprietor—
(a) applies a sign identical to, or
likely to be mistaken for, a registered trade mark to material intended to
be used—
(i) for labelling or packaging goods,
(ii) as a business paper in relation to
goods, or
(iii) for advertising goods, or
(b) uses in the course of a business
material bearing such a sign for labelling or
packaging goods, as a business paper in relation to goods, or for
advertising goods, or
(c) has in his possession, custody or
control in the course of a business any such material with a view to the
doing of anything, by himself or another, which would be an offence under
paragraph (b).
(3) A person commits
an offence who with a view to gain for himself or another, or with intent
to cause loss to another, and without the consent of the proprietor—
(a) makes an article specifically
designed or adapted for making copies of a sign identical to, or likely to
be mistaken for, a registered trade mark, or
(b) has such an article in his
possession, custody or control in the course of a business,
knowing or having reason to believe that it has
been, or is to be, used to produce goods, or material for labelling or packaging goods, as a business paper in
relation to goods, or for advertising goods.
(4) A person does not commit an offence under
this section unless—
(a) the goods are goods in respect of
which the trade mark is registered, or
(b) the trade mark has a reputation in
the United Kingdom
and the use of the sign takes or would take unfair advantage of, or is or
would be detrimental to, the distinctive character or the repute of the
trade mark.
(5) It is a defence for a person charged with an offence under this
section to show that he believed on reasonable grounds that the use of the
sign in the manner in which it was used, or was to be used, was not an
infringement of the registered trade mark.
(6) A person guilty of an offence under this
section is liable—
(a) on summary conviction to
imprisonment for a term not exceeding six months or a fine not exceeding
the statutory maximum, or both;
(b) on conviction on indictment to a
fine or imprisonment for a term not exceeding ten years, or both.
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Enforcement
function of local weights and measures authority.
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93.—(1) It
is the duty of every local weights and measures authority to enforce within
their area the provisions of section 92 (unauthorised
use of trade mark, &c. in relation to goods).
(2) The following provisions of the [1968
c. 29.] Trade Descriptions Act 1968 apply in relation to the
enforcement of that section as in relation to the enforcement of that Act—
section 27 (power to make test purchases),
section 28 (power to enter premises and inspect
and seize goods and documents),
section 29 (obstruction of authorised
officers), and
section 33 (compensation for loss, &c. of
goods seized).
(3) Subsection (1) above does not apply in
relation to the enforcement of section 92 in Northern Ireland, but it is
the duty of the Department of Economic Development to enforce that section
in Northern Ireland.
For that purpose the provisions of the [1968
c. 29.] Trade Descriptions Act 1968 specified in subsection (2) apply
as if for the references to a local weights and measures authority and any
officer of such an authority there were substituted references to that
Department and any of its officers.
(4) Any enactment which authorises
the disclosure of information for the purpose of facilitating the
enforcement of the Trade Descriptions Act 1968 shall apply as if section 92
above were contained in that Act and as if the functions of any person in
relation to the enforcement of that section were functions under that Act.
(5) Nothing in this section shall be construed
as authorising a local weights and measures
authority to bring proceedings in Scotland for an offence.
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Falsification of
register, &c.
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94.—(1) It
is an offence for a person to make, or cause to be made, a false entry in
the register of trade marks, knowing or having reason to believe that it is
false.
(2) It is an offence for a person—
(a) to make or cause to be made
anything falsely purporting to be a copy of an entry in the register, or
(b) to produce or tender or cause to be
produced or tendered in evidence any such thing,
knowing or having reason to believe that it is
false.
(3) A person guilty of an offence under this
section is liable—
(a) on conviction on indictment, to
imprisonment for a term not exceeding two years or a fine, or both;
(b) on summary conviction, to
imprisonment for a term not exceeding six months or a fine not exceeding
the statutory maximum, or both.
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Falsely
representing trade mark as registered.
|
95.—(1) It
is an offence for a person—
(a) falsely to represent that a mark is
a registered trade mark, or
(b) to make a false representation as
to the goods or services for which a trade mark is registered
knowing or having reason to believe that the
representation is false.
(2) For the purposes of this section, the use
in the United Kingdom
in relation to a trade mark—
(a) of the word "registered",
or
(b) of any other word or symbol
importing a reference (express or implied) to registration,
shall be deemed to be a representation as to
registration under this Act unless it is shown that the reference is to
registration elsewhere than in the United Kingdom and that the trade mark
is in fact so registered for the goods or services in question.
(3) A person guilty of an offence under this
section is liable on summary conviction to a fine not exceeding level 3 on
the standard scale.
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Supplementary
provisions as to summary proceedings in Scotland.
|
96.—(1) Notwithstanding
anything in section 331 of the [1975 c. 21.] Criminal Procedure (Scotland) Act 1975, summary proceedings in Scotland
for an offence under this Act may be begun at any time within six months
after the date on which evidence sufficient in the Lord Advocate's opinion
to justify the proceedings came to his knowledge.
For this purpose a certificate of the Lord
Advocate as to the date on which such evidence came to his knowledge is
conclusive evidence.
(2) For the purposes of subsection (1) and of
any other provision of this Act as to the time within which summary
proceedings for an offence may be brought, proceedings in Scotland shall be
deemed to be begun on the date on which a warrant to apprehend or to cite
the accused is granted, if such warrant is executed without undue delay.
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|
|
Forfeiture of
counterfeit goods, &c.
|
Forfeiture: England and Wales
or Northern Ireland.
|
97.—(1) In
England and Wales or Northern Ireland where there
has come into the possession of any person in connection with the
investigation or prosecution of a relevant offence—
(a) goods which, or the packaging of
which, bears a sign identical to or likely to be mistaken for a registered
trade mark,
(b) material bearing such a sign and
intended to be used for labelling or packaging
goods, as a business paper in relation to goods, or for advertising goods,
or
(c) articles specifically designed or
adapted for making copies of such a sign,
that person may apply under this section for an
order for the forfeiture of the goods, material or articles.
(2) An application under this section may be
made—
(a) where proceedings have been brought
in any court for a relevant offence relating to some or all of the goods,
material or articles, to that court;
(b) where no application for the
forfeiture of the goods, material or articles has been made under paragraph
(a), by way of complaint to a magistrates' court.
(3) On an application
under this section the court shall make an order for the forfeiture of any
goods, material or articles only if it is satisfied that a relevant offence
has been committed in relation to the goods, material or articles.
(4) A court may infer for the purposes of this
section that such an offence has been committed in relation to any goods,
material or articles if it is satisfied that such an offence has been
committed in relation to goods, material or articles which are
representative of them (whether by reason of being of the same design or
part of the same consignment or batch or otherwise).
(5) Any person aggrieved by an order made
under this section by a magistrates' court, or by a decision of such a
court not to make such an order, may appeal against that order or decision—
(a) in England
and Wales,
to the Crown Court;
(b) in Northern Ireland, to the county
court;
and an order so made may contain such provision as
appears to the court to be appropriate for delaying the coming into force
of the order pending the making and determination of any appeal (including
any application under section 111 of the [1980 c. 43.] Magistrates'
Courts Act 1980 or Article 146 of the [S.I. 1981/1675 (N.I. 26).]
Magistrates' Courts (Northern
Ireland) Order 1981 (statement of
case)).
(6) Subject to subsection (7), where any
goods, material or articles are forfeited under this section they shall be
destroyed in accordance with such directions as the court may give.
(7) On making an order under this section the
court may, if it considers it appropriate to do so, direct that the goods,
material or articles to which the order relates shall (instead of being
destroyed) be released, to such person as the court may specify, on
condition that that person—
(a) causes the offending sign to be
erased, removed or obliterated, and
(b) complies with any order to pay
costs which has been made against him in the proceedings for the order for
forfeiture.
(8) For the purposes
of this section a "relevant offence" means an offence under
section 92 above (unauthorised use of trade mark,
&c. in relation to goods) or under the [1968 c. 29.] Trade
Descriptions Act 1968 or any offence involving dishonesty or deception.
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Forfeiture: Scotland.
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98.—(1) In
Scotland
the court may make an order for the forfeiture of any—
(a) goods which bear, or the packaging
of which bears, a sign identical to or likely to be mistaken for a
registered trade mark,
(b) material bearing such a sign and
intended to be used for labelling or packaging
goods, as a business paper in relation to goods, or for advertising goods,
or
(c) articles specifically designed or
adapted for making copies of such a sign.
(2) An order under
this section may be made—
(a) on an application by the
procurator-fiscal made in the manner specified in section 310 of the [1975
c. 21.] Criminal Procedure (Scotland) Act 1975, or
(b) where a person is convicted of a
relevant offence, in addition to any other penalty which the court may
impose.
(3) On an application
under subsection (2)(a), the court shall make an order for the forfeiture
of any goods, material or articles only if it is satisfied that a relevant
offence has been committed in relation to the goods, material or articles.
(4) The court may infer for the purposes of
this section that such an offence has been committed in relation to any
goods, material or articles if it is satisfied that such an offence has
been committed in relation to goods, material or articles which are
representative of them (whether by reason of being of the same design or
part of the same consignment or batch or otherwise).
(5) The procurator-fiscal making the
application under subsection (2)(a) shall serve on any person appearing to
him to be the owner of, or otherwise to have an interest in, the goods,
material or articles to which the application relates a copy of the
application, together with a notice giving him the opportunity to appear at
the hearing of the application to show cause why the goods, material or
articles should not be forfeited.
(6) Service under subsection (5) shall be
carried out, and such service may be proved, in the manner specified for
citation of an accused in summary proceedings under the Criminal Procedure
(Scotland)
Act 1975.
(7) Any person upon whom notice is served
under subsection (5) and any other person claiming to be the owner of, or
otherwise to have an interest in, goods, material or articles to which an
application under this section relates shall be entitled to appear at the
hearing of the application to show cause why the goods, material or
articles should not be forfeited.
(8) The court shall not make an order
following an application under subsection (2)(a)—
(a) if any person on whom notice is
served under subsection (5) does not appear, unless service of the notice
on that person is proved; or
(b) if no notice under subsection (5)
has been served, unless the court is satisfied that in the circumstances it
was reasonable not to serve such notice.
(9) Where an order
for the forfeiture of any goods, material or articles is made following an
application under subsection (2)(a), any person who appeared, or was
entitled to appear, to show cause why goods, material or articles should
not be forfeited may, within 21 days of the making of the order, appeal to
the High Court by Bill of Suspension; and section 452(4)(a) to (e) of the
[1975 c. 21.] Criminal Procedure (Scotland) Act 1975 shall apply
to an appeal under this subsection as it applies to a stated case under
Part II of that Act.
(10) An order following an application under
subsection (2)(a) shall not take effect—
(a) until the end of the period of 21
days beginning with the day after the day on which the order is made; or
(b) if an appeal is made under
subsection (9) above within that period, until the appeal is determined or
abandoned.
(11) An order under
subsection (2)(b) shall not take effect—
(a) until the end of the period within
which an appeal against the order could be brought under the Criminal
Procedure (Scotland)
Act 1975; or
(b) if an appeal is made within that
period, until the appeal is determined or abandoned.
(12) Subject to
subsection (13), goods, material or articles forfeited under this section
shall be destroyed in accordance with such directions as the court may
give.
(13) On making an order under this section the
court may if it considers it appropriate to do so, direct that the goods,
material or articles to which the order relates shall (instead of being
destroyed) be released, to such person as the court may specify, on
condition that that person causes the offending sign to be erased, removed
or obliterated.
(14) For the purposes of this section—
"relevant offence" means an offence
under section 92 (unauthorised use of trade mark,
&c. in relation to goods) or under the [1968 c. 29.] Trade Descriptions
Act 1968 or any offence involving dishonesty or deception,
"the court" means—
(a) in relation to an order made on an
application under subsection (2)(a), the sheriff, and
(b) in relation to an order made under
subsection (2)(b), the court which imposed the penalty.
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|
Part IVV
|
|
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Miscellaneous and
general provisions
|
|
|
Miscellaneous
|
|
Unauthorised use of Royal arms, &c.
|
99.—(1) A
person shall not without the authority of Her Majesty use in connection
with any business the Royal arms (or arms so closely resembling the Royal
arms as to be calculated to deceive) in such manner as to be calculated to
lead to the belief that he is duly authorised to
use the Royal arms.
(2) A person shall not without the authority
of Her Majesty or of a member of the Royal family use in connection with
any business any device, emblem or title in such a manner as to be
calculated to lead to the belief that he is employed by, or supplies goods
or services to, Her Majesty or that member of the Royal family.
(3) A person who contravenes subsection (1)
commits an offence and is liable on summary conviction to a fine not
exceeding level 2 on the standard scale.
(4) Contravention of subsection (1) or (2) may
be restrained by injunction in proceedings brought by—
(a) any person who is authorised to use the arms, device, emblem or title in
question, or
(b) any person authorised
by the Lord Chamberlain to take such proceedings.
(5) Nothing in this
section affects any right of the proprietor of a trade mark containing any
such arms, device, emblem or title to use that trade mark.
|
|
Burden of proving
use of trade mark.
|
100. If
in any civil proceedings under this Act a question arises as to the use to
which a registered trade mark has been put, it is for the proprietor to
show what use has been made of it.
|
|
Offences
committed by partnerships and bodies corporate.
|
101.—(1) Proceedings
for an offence under this Act alleged to have been committed by a
partnership shall be brought against the partnership in the name of the
firm and not in that of the partners; but without prejudice to any
liability of the partners under subsection (4) below.
(2) The following provisions apply for the
purposes of such proceedings as in relation to a body corporate—
(a) any rules of court relating to the
service of documents;
(b) in England
and Wales or Northern Ireland,
Schedule 3 to the [1980 c. 43.] Magistrates' Courts Act 1980 or
Schedule 4 to the [S.I. 1981/1675 (N.I. 26).] Magistrates' Courts (Northern Ireland)
Order 1981 (procedure on charge of offence).
(3) A fine imposed on
a partnership on its conviction in such proceedings shall be paid out of
the partnership assets.
(4) Where a partnership is guilty of an
offence under this Act, every partner, other than a partner who is proved
to have been ignorant of or to have attempted to prevent the commission of
the offence, is also guilty of the offence and liable to be proceeded
against and punished accordingly.
(5) Where an offence under this Act committed
by a body corporate is proved to have been committed with the consent or
connivance of a director, manager, secretary or other similar officer of
the body, or a person purporting to act in any such capacity, he as well as
the body corporate is guilty of the offence and liable to be proceeded
against and punished accordingly.
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|
|
Interpretation
|
|
Adaptation of
expressions for Scotland.
|
102. In
the application of this Act to Scotland—
"account of profits" means accounting and
payment of profits;
"accounts" means count, reckoning and
payment;
"assignment" means assignation;
"costs" means expenses;
"declaration" means declarator;
"defendant" means defender;
"delivery up" means delivery;
"injunction" means interdict;
"interlocutory relief" means interim
remedy; and
"plaintiff" means pursuer.
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|
Minor
definitions.
|
103.—(1) In
this Act—
"business" includes a trade or
profession;
"director", in relation to a body
corporate whose affairs are managed by its members, means any member of the
body;
"infringement proceedings", in relation
to a registered trade mark, includes proceedings under section 16 (order
for delivery up of infringing goods, &c.);
"publish" means make available to the
public, and references to publication—
(a) in relation to an application for
registration, are to publication under section 38(1), and
(b) in relation to registration, are to
publication under section 40(4);
"statutory provisions" includes
provisions of subordinate legislation within the meaning of the [1978
c. 30.] Interpretation Act 1978;
"trade" includes any business or
profession.
(2) References in
this Act to use (or any particular description of use) of a trade mark, or
of a sign identical with, similar to, or likely to be mistaken for a trade
mark, include use (or that description of use) otherwise than by means of a
graphic representation.
(3) References in this Act to a Community
instrument include references to any instrument amending or replacing that
instrument.
|
|
Index of defined
expressions.
|
104. In
this Act the expressions listed below are defined by or otherwise fall to
be construed in accordance with the provisions indicated—
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|
|
account of profits and accounts (in Scotland)
|
section 102
|
|
appointed person (for purposes of section 76)
|
section 77
|
|
assignment (in Scotland)
|
section 102
|
|
business
|
section 103(1)
|
|
certification mark
|
section 50(1)
|
|
collective mark
|
section 49(1)
|
|
commencement (of this Act)
|
section 109(2)
|
|
Community trade mark
|
section 51
|
|
Community Trade Mark Regulation
|
section 51
|
|
Convention country
|
section 55(1)(b)
|
|
costs (in Scotland)
|
section 102
|
|
the court
|
section 75
|
|
date of application
|
section 33(2)
|
|
date of filing
|
section 33(1)
|
|
date of registration
|
section 40(3)
|
|
defendant (in Scotland)
|
section 102
|
|
delivery up (in Scotland)
|
section 102
|
|
director
|
section 103(1)
|
|
earlier right
|
section 5(4)
|
|
earlier trade mark
|
section 6
|
|
exclusive licence and
licensee
|
section 29(1)
|
|
infringement (of registered trade mark)
|
sections 9(1) and (2) and 10
|
|
infringement proceedings
|
section 103(1)
|
|
infringing articles
|
section 17
|
|
infringing goods
|
section 17
|
|
infringing material
|
section 17
|
|
injunction (in Scotland)
|
section 102
|
|
interlocutory relief (in Scotland)
|
section 102
|
|
the International Bureau
|
section 53
|
|
international trade mark (UK)
|
section 53
|
|
Madrid Protocol
|
section 53
|
|
Paris Convention
|
section 55(1)(a)
|
|
plaintiff (in Scotland)
|
section 102
|
|
prescribed
|
section 78(1)(b)
|
|
protected under the Paris Convention
|
|
|
—well-known trade marks
|
section 56(1)
|
|
—state emblems and official signs or hallmarks
|
section 57(1)
|
|
—emblems, &c. of international organisations
|
section 58(2)
|
|
publish and references to publication
|
section 103(1)
|
|
register, registered (and related expressions)
|
section 63(1)
|
|
registered trade mark agent
|
section 83(1)
|
|
registrable transaction
|
section 25(2)
|
|
the registrar
|
section 62
|
|
rules
|
section 78
|
|
statutory provisions
|
section 103(1)
|
|
trade
|
section 103(1)
|
|
trade mark
|
|
|
—generally
|
section 1(1)
|
|
—includes collective mark or certification mark
|
section 1(2)
|
|
United Kingdom (references include
Isle of Man)
|
section 108(2)
|
|
use (of trade mark or sign)
|
section 103(2)
|
|
well-known trade mark (under Paris Convention)
|
section 56(1)
|
|
|
|
Other general
provisions
|
|
Transitional
provisions.
|
105. The
provisions of Schedule 3 have effect with respect to transitional matters,
including the treatment of marks registered under the [1938 c. 22.]
Trade Marks Act 1938, and applications for registration and other
proceedings pending under that Act, on the commencement of this Act.
|
|
Consequential
amendments and repeals.
|
106.—(1) The
enactments specified in Schedule 4 are amended in accordance with that
Schedule, the amendments being consequential on the provisions of this Act.
(2) The enactments specified in Schedule 5 are
repealed to the extent specified.
|
|
Territorial
waters and the continental shelf.
|
107.—(1) For
the purposes of this Act the territorial waters of the United Kingdom shall be treated as part of
the United Kingdom.
(2) This Act applies to things done in the
United Kingdom sector of the continental shelf on a structure or vessel
which is present there for purposes directly connected with the exploration
of the sea bed or subsoil or the exploitation of their natural resources as
it applies to things done in the United Kingdom.
(3) The United Kingdom sector of the
continental shelf means the areas designated by order under section 1(7) of
the [1964 c. 29.] Continental Shelf Act 1964.
|
|
Extent.
|
108.—(1) This
Act extends to England
and Wales, Scotland and Northern Ireland.
(2) This Act also extends to the Isle of Man,
subject to such exceptions and modifications as Her Majesty may specify by
Order in Council; and subject to any such Order references in this Act to
the United Kingdom shall
be construed as including the Isle of Man.
|
|
Commencement.
|
109.—(1) The
provisions of this Act come into force on such day as the Secretary of
State may appoint by order made by statutory instrument.
Different days may be appointed for different
provisions and different purposes.
(2) The references to the commencement of this
Act in Schedules 3 and 4 (transitional provisions and consequential
amendments) are to the commencement of the main substantive provisions of
Parts I and III of this Act and the consequential repeal of the Trade Marks
Act 1938.
Provision may be made by order under this section
identifying the date of that commencement.
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|
Short title.
|
110. This
Act may be cited as the Trade Marks Act 1994.
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|
SCHEDULES
|
|
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|
SCHEDULE 1
|
|
Section 49.
|
|
|
|
Collective marks
|
|
|
General
|
|
|
1. The
provisions of this Act apply to collective marks subject to the following
provisions.
|
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|
Signs of which a
collective mark may consist
|
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2. In relation
to a collective mark the reference in section 1(1) (signs of which a trade
mark may consist) to distinguishing goods or services of one undertaking
from those of other undertakings shall be construed as a reference to
distinguishing goods or services of members of the association which is the
proprietor of the mark from those of other undertakings.
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|
Indication of
geographical origin
|
|
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3.—(1) Notwithstanding
section 3(1)(c), a collective mark may be registered which consists of
signs or indications which may serve, in trade, to designate the
geographical origin of the goods or services.
(2) However, the proprietor of such a mark is
not entitled to prohibit the use of the signs or indications in accordance
with honest practices in industrial or commercial matters (in particular,
by a person who is entitled to use a geographical name).
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|
Mark not to be
misleading as to character or significance
|
|
|
4.—(1) A collective mark
shall not be registered if the public is liable to be misled as regards the
character or significance of the mark, in particular if it is likely to be
taken to be something other than a collective mark.
(2) The registrar may accordingly require that
a mark in respect of which application is made for registration include
some indication that it is a collective mark.
Notwithstanding section 39(2), an application may
be amended so as to comply with any such requirement.
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|
|
Regulations
governing use of collective mark
|
|
|
5.—(1) An applicant for
registration of a collective mark must file with the registrar regulations
governing the use of the mark.
(2) The regulations must specify the persons authorised to use the mark, the conditions of
membership of the association and, where they exist, the conditions of use
of the mark, including any sanctions against misuse.
Further requirements with which the regulations
have to comply may be imposed by rules.
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|
|
Approval of
regulations by registrar
|
|
|
6.—(1) A collective mark
shall not be registered unless the regulations governing the use of the
mark—
(a) comply with paragraph 5(2) and any
further requirements imposed by rules, and
(b) are not contrary to public policy
or to accepted principles of morality.
(2) Before the end of
the prescribed period after the date of the application for registration of
a collective mark, the applicant must file the regulations with the
registrar and pay the prescribed fee.
If he does not do so, the application shall be
deemed to be withdrawn.
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|
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7.—(1) The registrar shall
consider whether the requirements mentioned in paragraph 6(1) are met.
(2) If it appears to the registrar that those
requirements 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 file amended regulations.
(3) If the applicant fails to satisfy the
registrar that those requirements are met, or to file regulations amended
so as to meet them, or fails to respond before the end of the specified
period, the registrar shall refuse the application.
(4) If it appears to the registrar that those
requirements, and the other requirements for registration, are met, he
shall accept the application and shall proceed in accordance with section
38 (publication, opposition proceedings and observations).
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|
|
8. The
regulations shall be published and notice of opposition may be given, and
observations may be made, relating to the matters mentioned in paragraph
6(1).This is in addition to any other grounds on which the application may
be opposed or observations made.
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|
|
Regulations to be
open to inspection
|
|
|
9. The
regulations governing the use of a registered collective mark shall be open
to public inspection in the same way as the register.
|
|
|
Amendment of
regulations
|
|
|
10.—(1) An amendment of the
regulations governing the use of a registered collective mark is not
effective unless and until the amended regulations are filed with the
registrar and accepted by him.
(2) Before accepting any amended regulations
the registrar may in any case where it appears to him expedient to do so
cause them to be published.
(3) If he does so, notice of opposition may be
given, and observations may be made, relating to the matters mentioned in
paragraph 6(1).
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|
|
Infringement:
rights of authorised users
|
|
|
11. The
following provisions apply in relation to an authorised
user of a registered collective mark as in relation to a licensee of a
trade mark—
(a) section 10(5) (definition of
infringement: unauthorised application of mark to
certain material);
(b) section 19(2) (order as to disposal
of infringing goods, material or articles: adequacy of other remedies);
(c) section 89 (prohibition of
importation of infringing goods, material or articles: request to
Commissioners of Customs and Excise).
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|
|
12.—(1) The following
provisions (which correspond to the provisions of section 30 (general
provisions as to rights of licensees in case of infringement)) have effect
as regards the rights of an authorised user in
relation to infringement of a registered collective mark.
(2) An authorised
user is entitled, subject to any agreement to the contrary between him and
the proprietor, to call on the proprietor to take infringement proceedings
in respect of any matter which affects his interests.
(3) If the proprietor—
(a) refuses to do so, or
(b) fails to do so within two months
after being called upon,
the authorised user may
bring the proceedings in his own name as if he were the proprietor.
(4) Where infringement proceedings are brought
by virtue of this paragraph, the authorised user
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 an authorised user
alone.
(5) A proprietor who is added as a defendant
as mentioned in sub-paragraph (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 collective mark any loss suffered or likely to
be suffered by authorised users 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 such users.
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|
|
Grounds for
revocation of registration
|
|
|
13. Apart
from the grounds of revocation provided for in section 46, the registration
of a collective mark may be revoked on the ground—
(a) that the manner in which the mark
has been used by the proprietor has caused it to become liable to mislead
the public in the manner referred to in paragraph 4(1), or
(b) that the proprietor has failed to
observe, or to secure the observance of, the regulations governing the use
of the mark, or
(c) that an amendment of the
regulations has been made so that the regulations—
(i) no longer
comply with paragraph 5(2) and any further conditions imposed by rules, or
(ii) are contrary to public policy or
to accepted principles of morality.
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|
|
Grounds for
invalidity of registration
|
|
|
14. Apart
from the grounds of invalidity provided for in section 47, the registration
of a collective mark may be declared invalid on the ground that the mark
was registered in breach of the provisions of paragraph 4(1) or 6(1).
|
|
|
|
|
|
|
SCHEDULE 2
|
|
Section 50.
|
|
|
|
Certification marks
|
|
|
General
|
|
|
1. The
provisions of this Act apply to certification marks subject to the
following provisions.
|
|
|
Signs of which a
certification mark may consist
|
|
|
2. In
relation to a certification mark the reference in section 1(1) (signs of
which a trade mark may consist) to distinguishing goods or services of one
undertaking from those of other undertakings shall be construed as a
reference to distinguishing goods or services which are certified from
those which are not.
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Indication of
geographical origin
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3.—(1) Notwithstanding
section 3(1)(c), a certification mark may be registered which consists of
signs or indications which may serve, in trade, to designate the
geographical origin of the goods or services.
(2) However, the proprietor of such a mark is
not entitled to prohibit the use of the signs or indications in accordance
with honest practices in industrial or commercial matters (in particular,
by a person who is entitled to use a geographical name).
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Nature of
proprietor's business
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4. A
certification mark shall not be registered if the proprietor carries on a
business involving the supply of goods or services of the kind certified.
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Mark not to be
misleading as to character or significance
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5.—(1) A certification mark
shall not be registered if the public is liable to be misled as regards the
character or significance of the mark, in particular if it is likely to be
taken to be something other than a certification mark.
(2) The registrar may accordingly require that
a mark in respect of which application is made for registration include
some indication that it is a certification mark.
Notwithstanding section 39(2), an application may
be amended so as to comply with any such requirement.
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Regulations
governing use of certification mark
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6.—(1) An applicant for
registration of a certification mark must file with the registrar
regulations governing the use of the mark.
(2) The regulations must indicate who is authorised to use the mark, the characteristics to be
certified by the mark, how the certifying body is to test those
characteristics and to supervise the use of the mark, the fees (if any) to
be paid in connection with the operation of the mark and the procedures for
resolving disputes.
Further requirements with which the regulations
have to comply may be imposed by rules.
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Approval of
regulations, &c.
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7.—(1) A certification mark
shall not be registered unless—
(a) the regulations governing the use
of the mark—
(i) comply
with paragraph 6(2) and any further requirements imposed by rules, and
(ii) are not contrary to public policy
or to accepted principles of morality, and
(b) the applicant is competent to
certify the goods or services for which the mark is to be registered.
(2) Before the end of
the prescribed period after the date of the application for registration of
a certification mark, the applicant must file the regulations with the
registrar and pay the prescribed fee.
If he does not do so, the application shall be
deemed to be withdrawn.
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8.—(1) The registrar shall
consider whether the requirements mentioned in paragraph 7(1) are met.
(2) If it appears to the registrar that those
requirements 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 file amended regulations.
(3) If the applicant fails to satisfy the
registrar that those requirements are met, or to file regulations amended
so as to meet them, or fails to respond before the end of the specified
period, the registrar shall refuse the application.
(4) If it appears to the registrar that those
requirements, and the other requirements for registration, are met, he
shall accept the application and shall proceed in accordance with section
38 (publication, opposition proceedings and observations).
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9. The
regulations shall be published and notice of opposition may be given, and
observations may be made, relating to the matters mentioned in paragraph 7(1).This
is in addition to any other grounds on which the application may be opposed
or observations made.
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Regulations to be
open to inspection
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10. The
regulations governing the use of a registered certification mark shall be
open to public inspection in the same way as the register.
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Amendment of
regulations
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11.—(1) An amendment of the
regulations governing the use of a registered certification mark is not
effective unless and until the amended regulations are filed with the registrar
and accepted by him.
(2) Before accepting any amended regulations
the registrar may in any case where it appears to him expedient to do so
cause them to be published.
(3) If he does so, notice of opposition may be
given, and observations may be made, relating to the matters mentioned in
paragraph 7(1).
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Consent to
assignment of registered certification mark
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|
12. The
assignment or other transmission of a registered certification mark is not
effective without the consent of the registrar.
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Infringement:
rights of authorised users
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|
13. The
following provisions apply in relation to an authorised
user of a registered certification mark as in relation to a licensee of a
trade mark—
(a) section 10(5) (definition of
infringement: unauthorised application of mark to
certain material);
(b) section 19(2) (order as to disposal
of infringing goods, material or articles: adequacy of other remedies);
(c) section 89 (prohibition of
importation of infringing goods, material or articles: request to
Commissioners of Customs and Excise).
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14. In
infringement proceedings brought by the proprietor of a registered
certification mark any loss suffered or likely to be suffered by authorised users 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
such users.
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Grounds for
revocation of registration
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15. Apart
from the grounds of revocation provided for in section 46, the registration
of a certification mark may be revoked on the ground—
(a) that the proprietor has begun to
carry on such a business as is mentioned in paragraph 4,
(b) that the manner in which the mark
has been used by the proprietor has caused it to become liable to mislead
the public in the manner referred to in paragraph 5(1),
(c) that the proprietor has failed to
observe, or to secure the observance of, the regulations governing the use
of the mark,
(d) that an amendment of the
regulations has been made so that the regulations—
(i) no longer
comply with paragraph 6(2) and any further conditions imposed by rules, or
(ii) are contrary to public policy or
to accepted principles of morality, or
(e) that the proprietor is no longer
competent to certify the goods or services for which the mark is
registered.
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Grounds for
invalidity of registration
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16. Apart
from the grounds of invalidity provided for in section 47, the registration
of a certification mark may be declared invalid on the ground that the mark
was registered in breach of the provisions of paragraph 4, 5(1) or 7(1).
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SCHEDULE 3
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Section 105.
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Transitional
provisions
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Introductory
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1.—(1) In this Schedule—
"existing registered mark" means a trade
mark, certification trade mark or service mark registered under the 1938
Act immediately before the commencement of this Act;
"the 1938 Act" means the [1938
c. 22.] Trade Marks Act 1938; and
"the old law" means that Act and any
other enactment or rule of law applying to existing registered marks
immediately before the commencement of this Act.
(2) For the purposes
of this Schedule—
(a) an application shall be treated as
pending on the commencement of this Act if it was made but not finally
determined before commencement, and
(b) the date on which it was made shall
be taken to be the date of filing under the 1938 Act.
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Existing registered
marks
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2.—(1) Existing registered
marks (whether registered in Part A or B of the register kept under the
1938 Act) shall be transferred on the commencement of this Act to the
register kept under this Act and have effect, subject to the provisions of
this Schedule, as if registered under this Act.
(2) Existing registered marks registered as a
series under section 21(2) of the 1938 Act shall be similarly registered in
the new register.
Provision may be made by rules for putting such
entries in the same form as is required for entries under this Act.
(3) In any other case notes indicating that
existing registered marks are associated with other marks shall cease to
have effect on the commencement of this Act.
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3.—(1) A condition entered on
the former register in relation to an existing registered mark immediately
before the commencement of this Act shall cease to have effect on
commencement.
Proceedings under section 33 of the 1938 Act
(application to expunge or vary registration for breach of condition) which
are pending on the commencement of this Act shall be dealt with under the
old law and any necessary alteration made to the new register.
(2) A disclaimer or limitation entered on the
former register in relation to an existing registered mark immediately
before the commencement of this Act shall be transferred to the new
register and have effect as if entered on the register in pursuance of
section 13 of this Act.
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Effects of
registration: infringement
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4.—(1) Sections 9 to 12 of
this Act (effects of registration) apply in relation to an existing
registered mark as from the commencement of this Act and section 14 of this
Act (action for infringement) applies in relation to infringement of an
existing registered mark committed after the commencement of this Act,
subject to sub-paragraph (2) below.
The old law continues to apply in relation to
infringements committed before commencement.
(2) It is not an infringement of—
(a) an existing registered mark, or
(b) a registered trade mark of which
the distinctive elements are the same or substantially the same as those of
an existing registered mark and which is registered for the same goods or
services,
to continue after commencement any use which did
not amount to infringement of the existing registered mark under the old
law.
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Infringing goods,
material or articles
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|
5. Section
16 of this Act (order for delivery up of infringing goods, material or
articles) applies to infringing goods, material or articles whether made
before or after the commencement of this Act.
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Rights and remedies
of licensee or authorised user
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|
6.—(1) Section 30 (general
provisions as to rights of licensees in case of infringement) of this Act
applies to licences granted before the
commencement of this Act, but only in relation to infringements committed
after commencement.
(2) Paragraph 14 of Schedule 2 of this Act
(court to take into account loss suffered by authorised
users, &c.) applies only in relation to infringements committed after
commencement.
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Co-ownership of
registered mark
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|
7. The
provisions of section 23 of this Act (co-ownership of registered mark)
apply as from the commencement of this Act to an existing registered mark
of which two or more persons were immediately before commencement
registered as joint proprietors.But so long as
the relations between the joint proprietors remain such as are described in
section 63 of the 1938 Act (joint ownership) there shall be taken to be an
agreement to exclude the operation of subsections (1) and (3) of section 23
of this Act (ownership in undivided shares and right of co-proprietor to
make separate use of the mark).
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Assignment, &c.
of registered mark
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|
8.—(1) Section 24 of this Act
(assignment or other transmission of registered mark) applies to transactions
and events occurring after the commencement of this Act in relation to an
existing registered mark; and the old law continues to apply in relation to
transactions and events occurring before commencement.
(2) Existing entries under section 25 of the
1938 Act (registration of assignments and transmissions) shall be
transferred on the commencement of this Act to the register kept under this
Act and have effect as if made under section 25 of this Act.
Provision may be made by rules for putting such entries
in the same form as is required for entries made under this Act.
(3) An application for registration under
section 25 of the 1938 Act which is pending before the registrar on the
commencement of this Act shall be treated as an application for registration
under section 25 of this Act and shall proceed accordingly.
The registrar may require the applicant to amend
his application so as to conform with the requirements of this Act.
(4) An application for registration under
section 25 of the 1938 Act which has been determined by the registrar but
not finally determined before the commencement of this Act shall be dealt
with under the old law; and sub-paragraph (2) above shall apply in relation
to any resulting entry in the register.
(5) Where before the commencement of this Act
a person has become entitled by assignment or transmission to an existing
registered mark but has not registered his title, any application for
registration after commencement shall be made under section 25 of this Act.
(6) In cases to which sub-paragraph (3) or (5)
applies section 25(3) of the 1938 Act continues to apply (and section 25(3)
and (4) of this Act do not apply) as regards the consequences of failing to
register.
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Licensing of
registered mark
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|
9.—(1) Sections 28 and 29(2)
of this Act (licensing of registered trade mark; rights of exclusive
licensee against grantor's successor in title) apply only in relation to licences granted after the commencement of this Act;
and the old law continues to apply in relation to licences
granted before commencement.
(2) Existing entries under section 28 of the
1938 Act (registered users) shall be transferred on the commencement of
this Act to the register kept under this Act and have effect as if made under
section 25 of this Act.
Provision may be made by rules for putting such
entries in the same form as is required for entries made under this Act.
(3) An application for registration as a
registered user which is pending before the registrar on the commencement
of this Act shall be treated as an application for registration of a licence under section 25(1) of this Act and shall
proceed accordingly.
The registrar may require the applicant to amend
his application so as to conform with the requirements of this Act.
(4) An application for registration as a
registered user which has been determined by the registrar but not finally
determined before the commencement of this Act shall be dealt with under
the old law; and sub-paragraph (2) above shall apply in relation to any
resulting entry in the register.
(5) Any proceedings pending on the
commencement of this Act under section 28(8) or (10) of the 1938 Act
(variation or cancellation of registration of registered user) shall be
dealt with under the old law and any necessary alteration made to the new
register.
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Pending
applications for registration
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|
10.—(1) An application for
registration of a mark under the 1938 Act which is pending on the
commencement of this Act shall be dealt with under the old law, subject as
mentioned below, and if registered the mark shall be treated for the
purposes of this Schedule as an existing registered mark.
(2) The power of the Secretary of State under
section 78 of this Act to make rules regulating practice and procedure, and
as to the matters mentioned in subsection (2) of that section, is
exercisable in relation to such an application; and different provision may
be made for such applications from that made for other applications.
(3) Section 23 of the 1938 Act (provisions as
to associated trade marks) shall be disregarded in dealing after the
commencement of this Act with an application for registration.
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Conversion of
pending application
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|
11.—(1) In the case of a
pending application for registration which has not been advertised under
section 18 of the 1938 Act before the commencement of this Act, the
applicant may give notice to the registrar claiming to have the registrability of the mark determined in accordance
with the provisions of this Act.
(2) The notice must be in the prescribed form,
be accompanied by the appropriate fee and be given no later than six months
after the commencement of this Act.
(3) Notice duly given is irrevocable and has
the effect that the application shall be treated as if made immediately
after the commencement of this Act.
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Trade marks
registered according to old classification
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|
12. The
registrar may exercise the powers conferred by rules under section 65 of
this Act (adaptation of entries to new classification) to secure that any
existing registered marks which do not conform to the system of
classification prescribed under section 34 of this Act are brought into
conformity with that system.This applies, in
particular, to existing registered marks classified according to the
pre-1938 classification set out in Schedule 3 to the [S.I. 1986/1319.]
Trade Marks Rules 1986.
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Claim to priority
from overseas application
|
|
|
13. Section
35 of this Act (claim to priority of Convention application) applies to an
application for registration under this Act made after the commencement of
this Act notwithstanding that the Convention application was made before
commencement.
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14.—(1) Where before the
commencement of this Act a person has duly filed an application for
protection of a trade mark in a relevant country within the meaning of
section 39A of the 1938 Act which is not a Convention country (a
"relevant overseas application"), he, 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 relevant overseas
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 relevant overseas 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 relevant 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 relevant overseas application, filed in the same
country, shall be considered the relevant overseas 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 relevant overseas
application.
(6) A right to priority arising as a result of
a relevant overseas application may be assigned or otherwise transmitted,
either with the application or independently.
The reference in sub-paragraph (1) to the
applicant's "successor in title" shall be construed accordingly.
(7) Nothing in this paragraph affects
proceedings on an application for registration under the 1938 Act made
before the commencement of this Act (see paragraph 10 above).
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Duration and
renewal of registration
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|
15.—(1) Section 42(1) of this
Act (duration of original period of registration) applies in relation to
the registration of a mark in pursuance of an application made after the
commencement of this Act; and the old law applies in any other case.
(2) Sections 42(2) and 43 of this Act
(renewal) apply where the renewal falls due on or after the commencement of
this Act; and the old law continues to apply in any other case.
(3) In either case it is immaterial when the
fee is paid.
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Pending application
for alteration of registered mark
|
|
|
16. An
application under section 35 of the 1938 Act (alteration of registered
trade mark) which is pending on the commencement of this Act shall be dealt
with under the old law and any necessary alteration made to the new
register.
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|
|
Revocation for
non-use
|
|
|
17.—(1) An application under
section 26 of the 1938 Act (removal from register or imposition of
limitation on ground of non-use) which is pending on the commencement of
this Act shall be dealt with under the old law and any necessary alteration
made to the new register.
(2) An application under section 46(1)(a) or
(b) of this Act (revocation for non-use) may be made in relation to an existing
registered mark at any time after the commencement of this Act.
Provided that no such application for the
revocation of the registration of an existing registered mark registered by
virtue of section 27 of the 1938 Act (defensive registration of well-known
trade marks) may be made until more than five years after the commencement
of this Act.
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Application for
rectification, &c.
|
|
|
18.—(1) An application under
section 32 or 34 of the 1938 Act (rectification or correction of the
register) which is pending on the commencement of this Act shall be dealt
with under the old law and any necessary alteration made to the new
register.
(2) For the purposes of proceedings under
section 47 of this Act (grounds for invalidity of registration) as it
applies in relation to an existing registered mark, the provisions of this
Act shall be deemed to have been in force at all material times.
Provided that no objection to the validity of the
registration of an existing registered mark may be taken on the ground
specified in subsection (3) of section 5 of this Act (relative grounds for
refusal of registration: conflict with earlier mark registered for
different goods or services).
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Regulations as to
use of certification mark
|
|
|
19.—(1) Regulations governing
the use of an existing registered certification mark deposited at the
Patent Office in pursuance of section 37 of the 1938 Act shall be treated
after the commencement of this Act as if filed under paragraph 6 of
Schedule 2 to this Act.
(2) Any request for amendment of the
regulations which was pending on the commencement of this Act shall be
dealt with under the old law.
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Sheffield marks
|
|
|
20.—(1) For the purposes of
this Schedule the Sheffield register kept under Schedule 2 to the 1938 Act
shall be treated as part of the register of trade marks kept under that
Act.
(2) Applications made to the Cutlers' Company
in accordance with that Schedule which are pending on the commencement of
this Act shall proceed after commencement as if they had been made to the
registrar.
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Certificate of
validity of contested registration
|
|
|
21. A
certificate given before the commencement of this Act under section 47 of
the 1938 Act (certificate of validity of contested registration) shall have
effect as if given under section 73(1) of this Act.
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|
Trade mark agents
|
|
|
22.—(1) Rules in force
immediately before the commencement of this Act under section 282 or 283 of
the [1988 c. 48.] Copyright, Designs and Patents Act 1988 (register of
trade mark agents; persons entitled to described themselves as registered)
shall continue in force and have effect as if made under section 83 or 85
of this Act.
(2) Rules in force immediately before the
commencement of this Act under section 40 of the 1938 Act as to the persons
whom the registrar may refuse to recognise as
agents for the purposes of business under that Act shall continue in force
and have effect as if made under section 88 of this Act.
(3) Rules continued in force under this
paragraph may be varied or revoked by further rules made under the relevant
provisions of this Act.
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SCHEDULE 4
|
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Section 106(1).
|
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|
|
Consequential amendments
|
|
|
General adaptation
of existing references
|
|
|
1.—(1) References in
statutory provisions passed or made before the commencement of this Act to
trade marks or registered trade marks within the meaning of the [1938
c. 22.] Trade Marks Act 1938 shall, unless the context otherwise
requires, be construed after the commencement of this Act as references to
trade marks or registered trade marks within the meaning of this Act.
(2) Sub-paragraph (1) applies, in particular,
to the references in the following provisions—
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[1947 c. 40.] Industrial Organisation and
Development Act 1947
|
Schedule 1, paragraph 7
|
|
[1947 c. 44.] Crown Proceedings Act 1947
|
section 3(1)(b)
|
|
[1960 c. 22.] Horticulture Act 1960
|
section 15(1)(b)
|
|
[1961 c. 31.] Printer's Imprint Act 1961
|
section 1(1)(b)
|
|
[1964 c. 14.] Plant Varieties and Seeds Act
1964
|
section 5A(4)
|
|
[1973 c. 36.] Northern Ireland Constitution
Act 1973
|
Schedule 3, paragraph 17
|
|
[1977 c. 37.] Patents Act 1977
|
section 19(2)
|
|
|
section 27(4)
|
|
|
section 123(7)
|
|
[1977 c. 50.] Unfair Contract Terms Act
1977
|
Schedule 1, paragraph 1(c)
|
|
[1978 c. 23.] Judicature (Northern Ireland) Act 1978
|
section 94A(5)
|
|
[1978 c. 33.] State Immunity Act 1978
|
section 7(a) and (b)
|
|
[1981 c. 54.] Supreme Court Act 1981
|
section 72(5)
|
|
|
Schedule 1, paragraph 1(i)
|
|
[1982 c. 27.] Civil Jurisdiction and
Judgments Act 1982
|
Schedule 5, paragraph 2
|
|
|
Schedule 8, paragraph 2(14) and 4(2)
|
|
[1983 c. 55.] Value Added Tax Act 1983
|
Schedule 3, paragraph 1
|
|
[1985 c. 6.] Companies Act 1985
|
section 396(3A)(a) or (as substituted by the
[1989 c. 40.] Companies Act 1989) section 396(2)(d)(i)
|
|
|
section 410(4)(c)(v)
|
|
|
Schedule 4, Part I, Balance Sheet Formats 1 and
2 and Note (2)
|
|
|
Schedule 9, Part I, paragraphs 5(2)(d) and 10(2)
|
|
[1985 c. 73.] Law Reform (Miscellaneous
Provisions) (Scotland)
Act 1985
|
section 15(5)
|
|
[1986 c. 3.] Atomic Energy Authority Act
1986
|
section 8(2)
|
|
[S.I. 1986/1032 (N.I. 6).] Companies (Northern Ireland)
Order 1986
|
article 403(3A)(a) or (as substituted by the
[S.I. 1990/1504 (N.I. 10).] Companies (No.2) (Northern Ireland) Order 1990)
article 403(2)(d)(i)
|
|
|
Schedule 4, Part I, Balance Sheet Formats 1 and
2 and Note (2)
|
|
|
Schedule 9, Part I, paragraphs 5(2)(d) and 10(2)
|
|
[1987 c. 43.] Consumer Protection Act 1987
|
section 2(2)(b)
|
|
[S.I. 1987/2049 (N.I. 20).] Consumer
Protection (Northern
Ireland) Order 1987
|
article 5(2)(b)
|
|
[1988 c. 1.] Income and Corporation Taxes
Act 1988
|
section 83(a)
|
|
[1992 c. 12.] Taxation of Chargeable Gains
Act 1992
|
section 275(h)
|
|
[1992 c. 53.] Tribunals and Inquiries Act
1992
|
Schedule 1, paragraph 34.
|
|
|
|
Patents and Designs
Act 1907 (c. 29)
|
|
|
2.—(1) The Patents and
Designs Act 1907 is amended as follows.
(2) In section 62 (the Patent Office)—
(a) in subsection (1) for "this
Act and the Trade Marks Act 1905" substitute "the Patents Act
1977, the Registered Designs Act 1949 and the Trade Marks Act 1994"
and
(b) in subsections (2) and (3) for
"the Board of Trade" substitute "the Secretary of
State".
(3) In section 63
(officers and clerks of the Patent Office)—
(a) for "the Board of Trade"
in each place where it occurs substitute "the Secretary of State"
and
(b) in subsection (2) omit the words
from "and those salaries" to the end.
(4) The repeal by the
[1949 c. 87.] Patents Act 1949 and the [1949 c. 88.] Registered
Designs Act 1949 of the whole of the 1907 Act, except certain provisions,
shall be deemed not to have extended to the long title, date of enactment
or enacting words or to so much of section 99 as provides the Act with its
short title.
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|
|
Patents, Designs,
Copyright and Trade Marks (Emergency) Act 1939 (c.107)
|
|
|
3.—(1) The Patents, Designs,
Copyright and Trade Marks (Emergency) Act 1939 is amended as follows.
(2) For section 3 (power of comptroller to
suspend rights of enemy or enemy subject) substitute—
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"Power of comptroller to suspend trade mark
rights of enemy or enemy subject.
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3. — (1) Where on
application made by a person proposing to supply goods or services of any
description it is made to appear to the comptroller—
(a) that it is difficult or
impracticable to describe or refer to the goods or services without the
use of a registered trade mark, and
(b) that the proprietor of the
registered trade mark (whether alone or jointly with another) is an enemy
or an enemy subject,
the comptroller may make an order suspending the
rights given by the registered trade mark.
(2) An order under this section shall
suspend those rights as regards the use of the trade mark—
(a) by the applicant, and
(b) by any person authorised
by the applicant to do, for the purposes of or in connection with the
supply by the applicant of the goods or services, things which would
otherwise infringe the registered trade mark,
to such extent and for such period as the
comptroller considers necessary to enable the applicant to render
well-known and established some other means of describing or referring to
the goods or services in question which does not involve the use of the
trade mark.
(3) Where an order has been made under this
section, no action for passing off lies on the part of any person
interested in the registered trade mark in respect of any use of it which
by virtue of the order is not an infringement of the right conferred by
it.
(4) An order under this section may be
varied or revoked by a subsequent order made by the comptroller.
"
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.
(3) In each of the following provisions—
(a) section 4(1)(c) (effect of war on
registration of trade marks),
(b) section 6(1) (power of comptroller
to extend time limits),
(c) section 7(1)(a) (evidence as to
nationality, &c.), and
(d) the definition of "the comptroller"
in section 10(1) (interpretation),
for "the Trade Marks Act 1938"
substitute "the Trade Marks Act 1994".
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Trade Descriptions
Act 1968 (c. 29)
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4. In the
Trade Descriptions Act 1968, in section 34 (exemption of trade description
contained in pre-1968 trade mark)—
(a) in the opening words, omit
"within the meaning of the Trade Marks Act 1938" and
(b) in paragraph (c), for "a
person registered under section 28 of the Trade Marks Act 1938 as a
registered user of the trade mark" substitute ", in the case of a
registered trade mark, a person licensed to use it".
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Solicitors Act 1974
(c. 47)
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5.—(1) Section 22 of the
Solicitors Act 1974 (preparation of instruments by unqualified persons) is
amended as follows.
(2) In subsection (2)(aa)
and (ab) (instruments which may be prepared by
registered trade mark agent or registered patent agent) for ", trade
mark or service mark" substitute "or trade mark".
(3) In subsection (3A) (interpretation)—
(a) in the definition of "registered
trade mark agent" for "section 282(1) of the Copyright, Designs
and Patents Act 1988" substitute "the Trade Marks Act 1994"
and
(b) in the definition of
"registered patent agent" for "of that Act" substitute
"of the Copyright, Designs and Patents Act 1988".
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House of Commons
Disqualification Act 1975 (c. 24)
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6. In Part
III of Schedule 1 to the House of Commons Disqualification Act 1975 (other
disqualifying offices), for the entry relating to persons appointed to hear
and determine appeals under the Trade Marks Act 1938 substitute—
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"Person appointed to hear and determine
appeals under the Trade Marks Act 1994."
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.
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Restrictive Trade
Practices Act 1976 (c. 34)
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7. In
Schedule 3 to the Restrictive Trade Practices Act 1976 (excepted
agreements), for paragraph 4 (agreements relating to trade marks)
substitute—
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" 4. — (1) This
Act does not apply to an agreement authorising
the use of a registered trade mark (other than a collective mark or
certification mark) if no such restrictions as are described in section
6(1) or 11(2) above are accepted, and no such information provisions as
are described in section 7(1) or 12(2) above are made, except in respect
of—
(a) the descriptions of goods bearing
the mark which are to be produced or supplied, or the processes of
manufacture to be applied to such goods or to goods to which the mark is
to be applied, or
(b) the kinds of services in relation
to which the mark is to be used which are to be made available or supplied,
or the form or manner in which such services are to be made available or
supplied, or
(c) the descriptions of goods which
are to be produced or supplied in connection with the supply of services
in relation to which the mark is to be used, or the process of
manufacture to be applied to such goods.
(2) This Act does not apply to an agreement authorising the use of a registered collective mark
or certification mark if—
(a) the agreement is made in
accordance with regulations approved by the registrar under Schedule 1 or
2 to the Trade Marks Act 1994, and
(b) no such restrictions as are
described in section 6(1) or 11(2) above are accepted, and no such
information provisions as are described in section 7(1) or 12(2) above
are made, except as permitted by those regulations.
"
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.
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Copyright, Designs
and Patents Act 1988 (c. 48)
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8.—(1) The Copyright, Designs
and Patents Act 1988 is amended as follows.
(2) In sections 114(6), 204(6) and 231(6)
(persons regarded as having an interest in infringing copies, &c.), for
"section 58C of the Trade Marks Act 1938" substitute
"section 19 of the Trade Marks Act 1994".
(3) In section 280(1) (privilege for
communications with patent agents), for "trade mark or service
mark" substitute "or trade mark".
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Tribunals and
Inquiries Act 1992 (c. 53)
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9. In Part
I of Schedule 1 to the Tribunals and Inquiries Act 1992 (tribunals under
direct supervision of Council on Tribunals), for "Patents, designs,
trade marks and service marks" substitute "Patents, designs and
trade marks".
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SCHEDULE 5
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Section 106(2).
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Repeals
and revocations
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Chapter or number
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Short title
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Extent of repeal or revocation
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1891 c. 50.
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Commissioners for Oaths Act 1891.
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In section 1, the words "or the Patents,
Designs and Trade Marks Acts, 1883 to 1888,".
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1907 c. 29.
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Patents and Designs Act 1907.
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In section 63(2), the words from "and those
salaries" to the end.
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1938 c. 22.
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Trade Marks Act 1938.
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The whole Act.
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1947 c. 44.
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Crown Proceedings Act 1947.
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In section 3(1)(b), the words "or
registered service mark".
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1949 c. 87.
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Patents Act 1949.
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Section 92(2).
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1964 c. 14.
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Plant Varieties and Seeds Act 1964.
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In section 5A(4), the words "under the
Trade Marks Act 1938".
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1967 c. 80.
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Criminal Justice Act 1967.
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In Schedule 3, in Parts I and IV, the entries
relating to the Trade Marks Act 1938.
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1978 c. 23.
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Judicature (Northern Ireland) Act 1978.
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In Schedule 5, in Part II, the paragraphs
amending the Trade Marks Act 1938.
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1984 c. 19.
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Trade Marks (Amendment) Act 1984.
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The whole Act.
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1985 c. 6.
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Companies Act 1985.
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In section 396—
(a) in subsection (3A)(a), and
(b) in subsection (2)(d)(i)
as inserted by the Companies Act 1989, the words "service
mark,".
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1986 c. 12.
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Statute Law (Repeals) Act 1986.
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In Schedule 2, paragraph 2.
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1986 c. 39.
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Patents, Designs and Marks Act 1986.
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Section 2.
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Section 4(4).
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In Schedule 1, paragraphs 1 and 2.
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Schedule 2.
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S.I. 1986/1032 (N.I. 6).
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Companies (Northern Ireland) Order 1986.
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In article 403—
(a) in paragraph (3A)(a), and
(b) in paragraph (2)(d)(i)
as inserted by the Companies (No.2) (Northern Ireland) Order 1990,
the words "service mark,".
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1987 c. 43.
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Consumer Protection Act 1987.
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In section 45—
(a) in subsection (1), the definition of
"mark" and "trade mark"
(b) subsection (4).
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S.I. 1987/2049.
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Consumer Protection (Northern Ireland) Order 1987.
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In article 2—
(a) in paragraph (2), the definitions of
"mark" and "trade mark"
(b) paragraph (3).
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1988 c. 1.
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Income and Corporation Taxes Act 1988.
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In section 83, the words from "References
in this section" to the end.
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1988 c. 48.
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Copyright, Designs and Patents Act 1988.
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Sections 282 to 284.
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In section 286, the definition of
"registered trade mark agent".
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Section 300.
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1992 c. 12.
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Taxation of Chargeable Gains Act 1992.
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In section 275(h), the words "service
marks" and "service mark".
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Date of posting: 27th February 2007
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