Trade Marks Act 1994 (c. 26)

(The document as of February, 2008)

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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.

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.

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.

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.

Section 106(1).

SCHEDULE 4 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--

[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.

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--

" 3 Power of comptroller to suspend trade mark rights of enemy or enemy subject

(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. " .

(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),

(d) the definition of "the comptroller" in section 10(1) (interpretation),

for "the Trade Marks Act 1938" substitute "the Trade Marks Act 1994".

Trade Descriptions Act 1968 (c. 29)

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".

Solicitors Act 1974 (c. 47)

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".

House of Commons Disqualification Act 1975 (c. 24)

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-- " Person appointed to hear and determine appeals under the Trade Marks Act 1994. " .

Restrictive Trade Practices Act 1976 (c. 34)

7 In Schedule 3 to the Restrictive Trade Practices Act 1976 (excepted agreements), for paragraph 4 (agreements relating to trade marks) substitute--

" 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. " .

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".

Tribunals and Inquiries Act 1992 (c. 53)

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".

Section 106(2).

SCHEDULE 5 Repeals and revocations

Chapter or number	Short title	Extent of repeal or revocation
1891 c. 50.	Commissioners for Oaths Act 1891.	In section 1, the words "or the Patents, Designs and Trade Marks Acts, 1883 to 1888,".
1907 c. 29.	Patents and Designs Act 1907.	In section 63(2), the words from "and those salaries" to the end.
1938 c. 22.	Trade Marks Act 1938.	The whole Act.
1947 c. 44.	Crown Proceedings Act 1947.	In section 3(1)(b), the words "or registered service mark".
1949 c. 87.	Patents Act 1949.	Section 92(2).
1964 c. 14.	Plant Varieties and Seeds Act 1964.	In section 5A(4), the words "under the Trade Marks Act 1938".
1967 c. 80.	Criminal Justice Act 1967.	In Schedule 3, in Parts I and IV, the entries relating to the Trade Marks Act 1938.
1978 c. 23.	Judicature (Northern Ireland) Act 1978.	In Schedule 5, in Part II, the paragraphs amending the Trade Marks Act 1938.
1984 c. 19.	Trade Marks (Amendment) Act 1984.	The whole Act.
1985 c. 6.	Companies Act 1985.	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,".
1986 c. 12.	Statute Law (Repeals) Act 1986.	In Schedule 2, paragraph 2.
1986 c. 39.	Patents, Designs and Marks Act 1986.	Section 2.
		Section 4(4).
		In Schedule 1, paragraphs 1 and 2.
		Schedule 2.
S.I. 1986/1032 (N.I. 6).	Companies (Northern Ireland) Order 1986.	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,".
1987 c. 43.	Consumer Protection Act 1987.	In section 45-- (a) in subsection (1), the definition of "mark" and "trade mark"; (b) subsection (4).
S.I. 1987/2049.	Consumer Protection (Northern Ireland) Order 1987.	In article 2-- (a) in paragraph (2), the definitions of "mark" and "trade mark"; (b) paragraph (3).
1988 c. 1.	Income and Corporation Taxes Act 1988.	In section 83, the words from "References in this section" to the end.
1988 c. 48.	Copyright, Designs and Patents Act 1988.	Sections 282 to 284.
		In section 286, the definition of "registered trade mark agent".
		Section 300.
1992 c. 12.	Taxation of Chargeable Gains Act 1992.	In section 275(h), the words "service marks" and "service mark".