Trade Marks Act 1994
Trade Marks Act 1994 (1994 c. 26)
- Trade Marks Act 1994 (1994 c. 26)
- Part I Registered trade marks
- Introductory
- 1 Trade marks.
- 2 Registered trade marks.
- Grounds for refusal of registration
- 3 Absolute grounds for refusal of registration.
- 4 Specially protected emblems.
- 5 Relative grounds for refusal of registration.
- 5A Grounds for refusal relating to only some of the goods or services
- 6 Meaning of “earlier trade mark”.
- 6A Raising of relative grounds in opposition proceedings in case of non-use
- 7 Raising of relative grounds in case of honest concurrent use.
- 8 Power to require that relative grounds be raised in opposition proceedings.
- Effects of registered trade mark
- 9 Rights conferred by registered trade mark.
- 10 Infringement of registered trade mark.
- 10A Right to prevent goods entering the UK without being released for free circulation
- 10B Prohibition on the use of a trade mark registered in the name of an agent or representative
- 11 Limits on effect of registered trade mark.
- 11A Non-use as defence in infringement proceedings
- 12 Exhaustion of rights conferred by registered trade mark.
- 13 Registration subject to disclaimer or limitation.
- Infringement proceedings
- 14 Action for infringement.
- 15 Order for erasure, &c. of offending sign.
- 16 Order for delivery up of infringing goods, material or articles.
- 17 Meaning of “infringing goods, material or articles”.
- 18 Period after which remedy of delivery up not available.
- 19 Order as to disposal of infringing goods, material or articles.
- 20 Jurisdiction of sheriff court or county court in Northern Ireland.
- Unjustified threats
- 21 Threats of infringement proceedings
- 21A Actionable threats
- 21B Permitted communications
- 21C Remedies and defences
- 21D Professional advisers
- 21E Supplementary: pending registration
- 21F Supplementary: proceedings for delivery up etc.
- Registered trade mark as object of property
- 22 Nature of registered trade mark.
- 23 Co-ownership of registered trade mark.
- 24 Assignment, &c. of registered trade mark.
- 25 Registration of transactions affecting registered trade mark.
- 26 Trusts and equities.
- 27 Application for registration of trade mark as an object of property.
- Licensing
- 28 Licensing of registered trade mark.
- 29 Exclusive licences.
- 30 General provisions as to rights of licensees in case of infringement.
- 31 Exclusive licensee having rights and remedies of assignee.
- Application for registered trade mark
- 32 Application for registration.
- 33 Date of filing.
- 34 Classification of trade marks.
- Priority
- 35 Claim to priority of Convention application.
- 36 Claim to priority from other relevant overseas application.
- Registration procedure
- 37 Examination of application.
- 38 Publication, opposition proceedings and observations.
- 39 Withdrawal, restriction or amendment of application.
- 40 Registration.
- 41 Registration: supplementary provisions.
- Duration, renewal and alteration of registered trade mark
- 42 Duration of registration.
- 43 Renewal of registration.
- 44 Alteration of registered trade mark.
- Surrender, revocation and invalidity
- 45 Surrender of registered trade mark.
- 46 Revocation of registration.
- 47 Grounds for invalidity of registration.
- 48 Effect of acquiescence.
- Collective marks
- 49 Collective marks.
- Certification marks
- 50 Certification marks.
- Part II European Union trade marks and international matters
- European Union trade marks
- 51. Meaning of “European Union trade mark”
- 52 Power to make provision in connection with European Union Trade Mark Regulation.
- 52A Certain trade marks registered as European Union trade marks to be treated as registered trade marks
- The Madrid Protocol: international registration
- 53 The Madrid Protocol.
- 54 Power to make provision giving effect to Madrid Protocol.
- 54A Certain international trade marks protected in the European Union to be treated as registered trade marks
- The Paris Convention: supplementary provisions
- 55 The Paris Convention.
- 56 Protection of well-known trade marks: Article 6bis.
- 57 National emblems, &c. of Convention countries: Article 6ter.
- 58 Emblems, &c. of certain international organisations: Article 6ter.
- 59 Notification under Article 6ter of the Convention.
- 60 Acts of agent or representative: Article 6septies.
- Miscellaneous
- 61 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
- Nice Classification
- 60A Similarity of goods and services
- Part III Administrative and other supplementary provisions
- The registrar
- 62 The registrar.
- The register
- 63 The register.
- 64 Rectification or correction of the register.
- 65 Adaptation of entries to new classification.
- Powers and duties of the registrar
- 66 Power to require use of forms.
- 67 Information about applications and registered trade marks.
- 68 Costs and security for costs.
- 69 Evidence before registrar.
- 70 Exclusion of liability in respect of official acts.
- 71 Registrar’s annual report.
- Legal proceedings and appeals
- 72 Registration to be prima facie evidence of validity.
- 73 Certificate of validity of contested registration.
- 74 Registrar’s appearance in proceedings involving the register.
- 75 The court.
- 76 Appeals from the registrar.
- 77 Persons appointed to hear and determine appeals.
- Rules, fees, hours of business, &c.
- 78 Power of Secretary of State to make rules.
- 79 Fees.
- 80 Hours of business and business days.
- 81 The trade marks journal.
- Trade mark agents
- 82 Recognition of agents.
- 83 The register of trade mark attorneys
- 83A Regulation of trade mark attorneys
- 84 Unregistered persons not to be described as registered trade mark agents.
- 85 Power to prescribe conditions, &c. for mixed partnerships and bodies corporate.
- 86 Use of the term “trade mark attorney”.
- 87 Privilege for communications with registered trade mark agents.
- 88 Power of registrar to refuse to deal with certain agents.
- Importation of infringing goods, material or articles
- 89 Infringing goods, material or articles may be treated as prohibited goods.
- 90 Power of Commissioners of Customs and Excise to make regulations.
- 91 Power of Commissioners for Revenue and Customs to disclose information.
- Offences
- 92 Unauthorised use of trade mark, &c. in relation to goods.
- 92A Search warrants
- 93 Enforcement function of local weights and measures authority.
- 94 Falsification of register, &c.
- 95 Falsely representing trade mark as registered.
- 96 Supplementary provisions as to summary proceedings in Scotland.
- Forfeiture of counterfeit goods, &c.
- 97 Forfeiture: England and Wales or Northern Ireland.
- 98 Forfeiture: Scotland.
- Part IV Miscellaneous and general provisions
- Miscellaneous
- 99 Unauthorised use of Royal arms, &c.
- 99A Reproduction of trade marks in dictionaries, encyclopaedias etc.
- 100 Burden of proving use of trade mark.
- 101 Offences committed by partnerships and bodies corporate.
- Interpretation
- 102 Adaptation of expressions for Scotland.
- 103 Minor definitions.
- 104 Index of defined expressions.
- Other general provisions
- 105 Transitional provisions.
- 106 Consequential amendments and repeals.
- 107 Territorial waters and the continental shelf.
- 108 Extent.
- 109 Commencement.
- 110 Short title.
- SCHEDULES
- SCHEDULE 1 Collective marks
- General
- Signs of which a collective mark may consist
- Indication of geographical origin
- Mark not to be misleading as to character or significance
- Regulations governing use of collective mark
- Approval of regulations by registrar
- Regulations to be open to inspection
- Amendment of regulations
- Infringement: rights of authorised users
- Grounds for revocation of registration
- Grounds for invalidity of registration
- SCHEDULE 2 Certification marks
- General
- Signs of which a certification mark may consist
- Indication of geographical origin
- Nature of proprietor’s business
- Mark not to be misleading as to character or significance
- Regulations governing use of certification mark
- Approval of regulations, &c.
- Regulations to be open to inspection
- Amendment of regulations
- Consent to assignment of registered certification mark
- Infringement: rights of authorised users
- Grounds for revocation of registration
- Grounds for invalidity of registration
- SCHEDULE 2A EUROPEAN UNION TRADE MARKS
- PART 1 Existing European Union trade marks
- A trade mark registered as an existing EUTM to be treated as registered under this Act
- Opt out
- Entries to be made in the register in relation to a comparable trade mark (EU)
- Comparable trade mark (EU) which derives from an EU Collective Mark or EU Certification Mark
- Renewal of a comparable trade mark (EU) which expires within six months after IP completion day
- Restoration of a comparable trade mark (EU)
- Raising of relative grounds in opposition proceedings in case of non-use
- Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (EU)
- Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (EU)
- Reputation of a comparable trade mark (EU)
- Rights conferred by registered trade mark
- Effect of claim of priority
- Effect of seniority claim
- Determination of invalidity and liability to revocation in relation to claims of seniority
- Procedure for declaration that trade mark would have been liable to be revoked or declared invalid
- Assignment of an existing EUTM not registered on IP completion day
- Effect of a licence of an existing EUTM
- Effect of a security interest in an existing EUTM
- Continuity of rights in relation to a comparable trade mark (EU)
- Existing EUTM: pending proceedings
- Existing EUTM: effect of injunction
- Existing EUTM: effect of invalidity or revocation
- PART 2 Treatment of European Union trade marks which expire during the period of six months ending on IP completion day
- Registration of certain expired European Union trade marks
- Renewal of an expired EUTM
- PART 3 Applications for European Union trade marks which are pending on IP completion day
- Application of Part
- Application for registration under this Act based upon an existing EUTM application
- Right to claim seniority where seniority has been claimed by an existing EUTM application
- Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 26
- PART 4 Restoration of European Union trade mark registrations and applications
- Restoration of a European Union trade mark to the EUTM Register
- Restoration of an application for a European Union trade mark
- PART 5 Interpretation
- Interpretation
- SCHEDULE 2B INTERNATIONAL TRADE MARKS PROTECTED IN THE EUROPEAN UNION
- PART 1 Existing international trade marks protected in the European Union
- An international trade mark protected in the European Union to be treated as registered under this Act
- Opt out
- Entries to be made in the register in relation to a comparable trade mark (IR)
- Comparable trade mark (IR) which derives from a mark treated as an EU Collective Mark or EU Certification Mark
- Renewal of a comparable trade mark (IR) which expires within six months after IP completion day
- Restoration of a comparable trade mark (IR)
- Raising of relative grounds in opposition proceedings in case of non-use
- Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (IR)
- Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (IR)
- Reputation of a comparable trade mark (IR)
- Rights conferred by registered trade mark
- Effect of disclaimer
- Effect of claim of priority
- Effect of seniority claim
- Determination of invalidity and liability to revocation in relation to claims of seniority
- Procedure for declaration that trade mark would have been liable to be revoked or declared invalid
- Assignment of an existing IR(EU) not registered on IP completion day
- Effect of a licence of an existing IR(EU)
- Effect of a security interest in an existing IR(EU)
- Continuity of rights in relation to a comparable trade mark (IR)
- Existing IR(EU): pending proceedings
- Existing IR(EU): effect of injunction
- PART 2 Treatment of international trade marks protected in the European Union which expire during the period of six months ending on IP completion day
- Registration of certain expired international trade marks
- Renewal of an expired IR(EU)
- Renewal of an expired IR(EU): territorial extension under Article 3ter(1)
- Renewal of an expired IR(EU): territorial extension under Article 3ter(2)
- PART 3 Applications for the extension of protection of international registrations to the European Union which are pending on IP completion day
- Interpretation
- Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register prior to IP completion day
- Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register on or after IP completion day
- Right to claim seniority where seniority has been claimed by an existing ITM application or an existing request for EU extension
- Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 30
- PART 4 Transformation applications which are pending on IP completion day
- Transformation applications
- Application for registration based upon a cancelled international registration
- PART 5 Interpretation
- Interpretation
- SCHEDULE 3 Transitional provisions
- Introductory
- Existing registered marks
- Effects of registration: infringement
- Infringing goods, material or articles
- Rights and remedies of licensee or authorised user
- Co-ownership of registered mark
- Assignment, &c. of registered mark
- Licensing of registered mark
- Pending applications for registration
- Conversion of pending application
- Trade marks registered according to old classification
- Claim to priority from overseas application
- Duration and renewal of registration
- Pending application for alteration of registered mark
- Revocation for non-use
- Application for rectification, &c.
- Regulations as to use of certification mark
- Sheffield marks
- Certificate of validity of contested registration
- Trade mark agents
- SCHEDULE 4 Consequential amendments
- General adaptation of existing references
- Patents and Designs Act 1907 (c.29)
- Patents, Designs, Copyright and Trade Marks (Emergency) Act 1939(c.107)
- Trade Descriptions Act 1968 (c.29)
- Solicitors Act 1974 (c.47)
- House of Commons Disqualification Act 1975 (c.24)
- Restrictive Trade Practices Act 1976 (c.34)
- Copyright, Designs and Patents Act 1988 (c.48)
- Tribunals and Inquiries Act 1992 (c.53)
- SCHEDULE 5 Repeals and revocations
Feedback