Trade Marks Act 1994 (c. 26)

(The document as of February, 2008)

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51 Meaning of "Community trade mark"

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.

52 Power to make provision in connection with Community Trade Mark Regulation

(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.

The Madrid Protocol: international registration

53 The Madrid Protocol

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.

54 Power to make provision giving effect to Madrid Protocol

(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

(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.

The Paris Convention: supplementary provisions

55 The Paris Convention

(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.

56 Protection of well-known trade marks: Article 6bis

(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.

57 National emblems, &c. of Convention countries: Article 6ter

(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.

58 Emblems, &c. of certain international organisations: Article 6ter

(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).

59 Notification under Article 6ter of the Convention

(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).

60 Acts of agent or representative: Article 6septies

(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.

Miscellaneous

61 Stamp duty

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.

Part IIIII Administrative and other supplementary provisions

The registrar

62 The registrar

In this Act "the registrar" means the Comptroller-General of Patents, Designs and Trade Marks.

The register

63 The register

(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

(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.

64 Rectification or correction of the register

(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.

65 Adaptation of entries to new classification

(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.

Powers and duties of the registrar

66 Power to require use of forms

(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.

67 Information about applications and registered trade marks

(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.

68 Costs and security for costs

(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.

69 Evidence before registrar

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.

70 Exclusion of liability in respect of official acts

(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.

71 Registrar's annual report

(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.

Legal proceedings and appeals

72 Registration to be prima facie evidence of validity

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.

73 Certificate of validity of contested registration

(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.

74 Registrar's appearance in proceedings involving the register

(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

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,

(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.

75 The court

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.

76 Appeals from the registrar

(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.

77 Persons appointed to hear and determine appeals

(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;

(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.

Rules, fees, hours of business, &c.

78 Power of Secretary of State to make rules

(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;

(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.

79 Fees

(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.

80 Hours of business and business days

(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.

81 The trade marks journal

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.

Trade mark agents

82 Recognition of agents

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.

83 The register of trade mark agents

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