Office of Public Sector Information
PART I continued
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
(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.
Trade Marks Act 1994