Patents, Designs and Marks Act 1986

Registers of trade marks, designs and patents-computerisation etc.

1

The amendments specified in Schedule 1 to this Act (which relate to computerisation of the registers there mentioned and to associated matters) shall have effect.

Service marks etc.

2

• (1) In section 1 of the Trade Marks (Amendment) Act 1984—

• (a) the following subsections shall be substituted for subsections (1) and (2)—

(1) Subject to subsection (2) below, the Trade Marks Act 1938 shall have effect with respect to service marks as it has effect with respect to trade marks (references to goods having effect as references to services). (2) The Act of 1938 shall have effect in relation to service marks as mentioned in Schedule 1 to this Act.

; and

• (b) the following subsection shall be substituted for sub section (7)—

(7) In this Act " service mark " means a mark (including a device, name, signature, word, letter, numeral, or any combination thereof) used or proposed to be used in relation to services for the purpose of indicating, or so as to indicate, that a particular person is connected, in the course of business, with the provision of those services, whether with or without any indication of the identity of that person.

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• (2) Subject to any Order made after the passing of this Act by virtue of subsection (l)(a) of section 3 of the Northern Ireland Constitution Act 1973, service marks shall not be a transferred matter for the purposes of that Act but shall for the purposes of subsection (2) of that section be treated as specified in Schedule 3 to that Act.

• (3) The enactments mentioned in Schedule 2 to this Act shall have effect subject to the amendments there specified.

Repeals

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• (1) The enactments mentioned in Part I of Schedule 3 to this Act are repealed to the extent specified in the third column of that Part of that Schedule in consequence of section 1 above and Schedule 1 to this Act.

• (2) The enactments mentioned in Part II of Schedule 3 to this Act are repealed to the extent specified in the third column of that Part of that Schedule in consequence of section 2 above and Schedule 2 to this Act.

Short title, extent and commencement

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• (1) This Act may be cited as the Patents, Designs and Marks Act 1986.

• (2) The amendment or repeal of any enactment by this Act has the same extent as that enactment.

• (3) Subject to subsection (2) above, this Act extends to Northern Ireland.

• (4) The following provisions of this Act shall extend to the Isle of Man, subject to any exceptions, adaptations or modifications contained in an Order made by Her Majesty in Council—

• (a) section 1 so far as it relates to paragraphs 1 and 2 of Schedule 1;

• (b) section 2(1);

• (c) section 2(3) so far as it relates to paragraphs 1(2)(e)(i) and (ii), 2(2)(b), 3 to 7 and 9 to 12 of Schedule 2 ;

• (d) section 3(1) so far as it relates to the Trade Marks Act 1938 ;

• (e) section 3(2); and

• (f) this section.

• (5) Her Majesty may by Order in Council make provision for extending to the Isle of Man, with such exceptions, adaptations or modifications as may be specified in the Order, sections 1 and 3(1) above so far as they relate to the Registered Designs Act 1949 and the Patents Act 1977.

• (6) Section 1 above (with Schedule 1) and section 3 above, so far as it relates to Part I of Schedule 3, shall come into force on such day as the Secretary of State may by order made by statutory instrument appoint and different days may be appointed in pursuance of this subsection for different provisions or different purposes of the same provision.

• (7) Section 2 above (with Schedule 2) and section 3 above, so far as it relates to Part II of Schedule 3, shall come into force on the same day as the Trade Marks (Amendment) Act 1984; but anything done before their commencement which, if it had been done after it, would have constituted an application for the registration of a service mark shall be treated as if it had been done immediately after it.

SCHEDULE 1

Trade Marks Act 1938 (c.22)

1

The following section shall be substituted for section 1 of the Trade Marks Act 1938—

(1) (1) The Comptroller-General of Patents, Designs and Trade Marks (in this Act referred to as " the Registrar ") shall maintain the register of trade marks, in which shall be entered— (a) all registered trade marks with the names and addresses of their proprietors ; (b) notifications of assignments and transmissions ; (c) the names and addresses of all registered users ; (d) disclaimers, conditions and limitations ; and (e) such other matters relating to registered trade marks as may be prescribed. (2) The register shall continue to be divided into two parts called respectively Part A and Part B. (3) The register need not be kept in documentary form. (4) Subject to any rules under this Act, the public shall have a right to inspect the register at the Patent Office at all convenient times. (5) Any person who applies for a certified copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts ; and the rules may provide that any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts. (6) Applications under subsection (5) above or rules made by virtue of that subsection shall be made in such manner as may be prescribed. (7) In relation to any portion of the register kept otherwise than in documentary form— (a) the right of inspection conferred by subsection (4) above is a right to inspect the material on the register; and (b) the right to a copy or extract conferred by subsection (5) above or the rules is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible. (8) A certificate purporting to be signed by the Registrar and certifying that any entry which he is authorised by this Act or rules to make has or has not been made, or that any other thing which he is so authorised to do has or has not been done, shall be prima facie evidence, and in Scotland shall be sufficient evidence, of the matters so certified. (9) A copy of an entry in the register or an extract from the register which is supplied under subsection (5) above and purports to be a certified copy or certified extract shall, subject to subsection (10) below, be admitted in evidence without further proof and without production of any original; and in Scotland such evidence shall be sufficient evidence. (10) In the application of this section to England and Wales nothing in it shall be taken as detracting from section 69 or 70 of the Police and Criminal Evidence Act 1984 or any provision made by virtue of either of them. (11) In this section "certified copy" and "certified extract" mean a copy and extract certified by the Registrar and sealed with the seal of the Patent Office.

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2

The words " name or address " shall be substituted for the words " name, address or description " in subsection (l)(a) and (6) and subsection (2) of section 34 of that Act (correction of register).

Registered Designs Act 1949 (c.88)

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The following section shall be substituted for section 17 of the Registered Designs Act 1949—

(17) (1) The registrar shall maintain the register of designs, in which shall be entered— (a) the names and addresses of proprietors of registered designs ; (b) notices of assignments and of transmissions of registered designs ; and (c) such other matters as may be prescribed or as the registrar may think fit. (2) No notice of any trust, whether express, implied or constructive, shall be entered in the register of designs, and the registrar shall not be affected by any such notice. (3) The register need not be kept in documentary form. (4) Subject to the provisions of this Act and to rules made by the Secretary of State under it, the public shall have a right to inspect the register at the Patent Office at all convenient times. (5) Any person who applies for a certified, copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts ; and rules made by the Secretary of State under this Act may provide that any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts. (6) Applications under subsection (5) above or rules made by virtue of that subsection shall be made in such manner as may be prescribed. (7) In relation to any portion of the register kept otherwise than in documentary form— (a) the right of inspection conferred by subsection (4) above is a right to inspect the material on the register ; and (b) the right to a copy or extract conferred by subsection (5) above or rules is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible. (8) Subject to subsection (11) below, the register shall be prima facie evidence of anything required or authorised by this Act to be entered in it and in Scotland shall be sufficient evidence of any such thing. (9) A certificate purporting to be signed by the registrar and certifying that any entry which he is authorised by or under this Act to make has or has not been made, or that any other thing which he is so authorised to do has or has not been done, shall be prima facie evidence, and in Scotland shall be sufficient evidence, of the matters so certified. (10) Each of the following— (a) a copy of an entry in the register or an extract from the register which is supplied under subsection (5) above; (b) a copy of any representation, specimen or document kept in the Patent Office or an extract from any such document, which purports to be a certified copy or certified extract shall, subject to subsection (11) below, be admitted in evidence without further proof and without production of any original; and in Scotland such evidence shall be sufficient evidence. (11) In the application of this section to England and Wales nothing in it shall be taken as detracting from section 69 or 70 of the Police and Criminal Evidence Act 1984 or any provision made by virtue of either of them. (12) In this section "certified copy" and "certified extract" mean a copy and extract certified by the registrar and sealed with the seal of the Patent Office.

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Patents Act 1977 (c.37)

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The following section shall be substituted for section 32 of the Patents Act 1977—

(32) (1) The comptroller shall maintain the register of patents, which shall comply with rules made by virtue of this section and shall be kept in accordance with such rules. (2) Without prejudice to any other provision of this Act or rules, rules may make provision with respect to the following matters, including provision imposing requirements as to any of those matters— (a) the registration; of patents and of published applications for patents; (b) the registration of transactions, instruments or events affecting rights in or under patents and applications ; (c) the furnishing to the comptroller of any prescribed documents or description of documents in connection with any matter which is required to be registered ; (d) the correction of errors in the register and in any documents filed at the Patent Office in connection with registration; and (e) the publication and advertisement of anything done under this Act or rules in relation to the register. (3) Notwithstanding anything in subsection (2)(b) above, no notice of any trust, whether express, implied or constructive, shall be entered in the register and the comptroller shall not be affected by any such notice. (4) The register need not be kept in documentary form. (5) Subject to rules, the public shall have a right to inspect the register at the Patent Office at all convenient times. (6) Any person who applies for a certified copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts ; and rules may provide that any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts. (7) Applications under subsection (6) above or rules made by virtue of that subsection shall be made in such manner as may be prescribed. (8) In relation to any portion of the register kept otherwise than in documentary form— (a) the right of inspection conferred by subsection (5) above is a right to inspect the material on the register ; and (b) the right to a copy or extract conferred by subsection (6) above or rules is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible. (9) Subject to subsection (12) below, the register shall be prima facie evidence of anything required or authorised by this Act or rules to be registered and in Scotland shall be sufficient evidence of any such thing. (10) A certificate purporting to be signed by the comptroller and certifying that any entry which he is authorised by this Act or rules to make has or has not been made, or that any other thing which he is so authorised to do has or has not been done, shall be prima facie evidence, and in Scotland shall be sufficient evidence, of the matters so certified. (11) Each of the following, that is to say— (a) a copy of an entry in the register or an extract from the register which is supplied under subsection (6) above ; (b) a copy of any document kept in the Patent Office or an extract from any such document, any specification of a patent or any application for a patent which has been published, which purports to be a certified copy or a certified extract shall, subject to subsection (12) below, be admitted in evidence without further proof and without production of any original; and in Scotland such evidence shall be sufficient evidence. (12) In the application of this section to England and Wales nothing in it shall be taken as detracting from section 69 or 70 of the Police and Criminal Evidence Act 1984 or any provision made by virtue of either of them. (13) In this section "certified copy" and "certified extract" mean a copy and extract certified by the comptroller and sealed with the seal of the Patent Office. (14) In this Act, except so far as the context otherwise requires— - " register ", as a noun, means the register of patents ; - " register", as a verb, means, in relation to any thing, to register or register particulars, or enter notice, of that thing in the register and, in relation to a person, means to enter his name in the register;

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and cognate expressions shall be construed accordingly.

SCHEDULE 2

PART I — References to Trade Marks to Include References to Service Marks

1

• (1) Any reference to a trade mark in a provision to which this paragraph applies shall include a reference to a service mark and accordingly any reference to a registered trade mark includes a reference to a registered service mark.

• (2) The provisions to which this paragraph applies are—

• (a) in the Crown Proceedings Act 1947 (including that Act as it applies in Northern Ireland in relation to the Crown in right of Her Majesty's Government in the United Kingdom and in right of Her Majesty's Government in Northern Ireland), subsections (1) and (3) of section 3 (provisions as to industrial property);

• (b) in the Printer's Imprint Act 1961, subsection (1) of section 1. (relaxation of requirements as to printer's imprint etc.);

• (c) in the Income and Corporation Taxes Act 1970, section 132 (deduction of fees and expenses);

• (d) in the Tribunals and Inquiries Act 1971, paragraph 22 of Schedule 1 (tribunals under general supervision of Council on Tribunals);

• (e) in the Patents Act 1977—

• (i) subsection (2) of section 19 (general power to amend application for patent before grant) ;

• (ii) subsection (4) of section 27 (general power to amend specification after grant of patent);

• (iii) subsection (7) of section 123 (publication of reports of cases);

• (f) in the Unfair Contract Terms Act 1977, paragraph 1(c) of Schedule 1 (scope of sections 2 to 4 and 7 of Act);

• (g) in the State Immunity Act 1978, section 7 (liability of States as respects proceedings relating to intellectual property etc.);

• (h) the definition of " intellectual property " in subsection (5) of section 72 of the Supreme Court Act 1981, subsection (5) of section 15 of the Law Reform (Miscellaneous Provisions) (Scotland) Act 1985 and subsection (5) of section 94A of the Judicature (Northern Ireland) Act 1978 (all relating to the withdrawal of privilege against incrimination of self or spouse in certain proceedings) ;

• (i) in the Supreme Court Act 1981, paragraph 1 of Schedule 1 (causes and matters assigned to Chancery Division);

• (j) in the Civil Jurisdiction and Judgments Act 1982, paragraph 2 of Schedule 5 (proceedings excluded from Schedule 4 to that Act) and paragraphs 2(14) and 4(2) of Schedule 8 (rules as to jurisdiction in Scotland) ;

• (k) in the Companies Act 1985—

• (i) subsection (1) (J) of section 396 and subsection (4)(c) of section 410 (charges which have to be registered); and

• (ii) Part I of Schedule 4 and Part I of Schedule 9 (form and content of company accounts and special category accounts); and

• (l) in the Companies Act (Northern Ireland) 1960, subsection (2)(f) of section 93, Part I of Schedule 6 and Part I of Schedule 6A (corresponding provisions for Northern Ireland).

PART II — References to 1938 Act to Include References to Act as Extended

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• (1) Any reference to the Trade Marks Act 1938 in a provision to which this paragraph applies shall include a reference to that Act as it has effect by virtue of section 1 of the Trade Marks (Amendment) Act 1984.

• (2) The provisions to which this paragraph applies are—

• (a) in the Patents and Designs Act 1907, subsection (1) of section 62 (Patent Office) and subsection (2) of section 63 (officers and clerks);

• (b) in the Patents, Designs, Copyright and Trade Marks (Emergency) Act 1939, subsection (l)(c) of section 4 (effect of war on registration), subsection (1) of section 6 (power to extend time limits), subsection (1) of section 7 (evidence) and subsection (1) of section 10 (interpretation); and