Trade Marks Act 1994

Part I — Registered trade marks

Introductory

Trade marks.

1

• (1) In this Act “trade mark” means any sign which is capable—

• (a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and

• (b) of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.

• (2) References in this Act to a trade mark include, unless the context otherwise requires, references to a collective mark (see section 49) or certification mark (see section 50).

Registered trade marks.

2

• (1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.

• (2) No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.

Grounds for refusal of registration

Absolute grounds for refusal of registration.

3

• (1) The following shall not be registered—

• (a) signs which do not satisfy the requirements of section 1(1),

• (b) trade marks which are devoid of any distinctive character,

• (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,

• (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in thebona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

• (2) A sign shall not be registered as a trade mark if it consists exclusively of—

• (a) the shape, or another characteristic, which results from the nature of the goods themselves,

• (b) the shape, or another characteristic, of goods which is necessary to obtain a technical result, or

• (c) the shape, or another characteristic, which gives substantial value to the goods.

• (3) A trade mark shall not be registered if it is—

• (a) contrary to public policy or to accepted principles of morality, or

• (b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).

• (4) A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law ... other than law relating to trade marks.

• (4A) A trade mark is not to be registered if its registration is prohibited by or under—

• (a) any enactment or rule of law, or

• (b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (c) any international agreement to which the United Kingdom ... is a party,

providing for the protection of designations of origin or geographical indications.

• (4B) A trade mark is not to be registered if its registration is prohibited by or under—

• (a) any enactment or rule of law, or

• (b) any international agreement to which the United Kingdom is a party,

providing for the protection of traditional terms for wine or traditional specialities guaranteed.

• (4C) A trade mark is not to be registered if it—

• (a) consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and

• (b) is in respect of plant varieties of the same or closely related species.

• (4D) Subsection (4C)(a) refers to registration in accordance with any—

• (a) enactment or rule of law, or

• (b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (c) international agreement to which the United Kingdom ... is a party,

providing for the protection of plant variety rights.

• (5) A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems).

• (6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.

Specially protected emblems.

4

• (1) A trade mark which consists of or contains—

• (a) the Royal arms, or any of the principal armorial bearings of the Royal arms, or any insignia or device so nearly resembling the Royal arms or any such armorial bearing as to be likely to be mistaken for them or it,

• (b) a representation of the Royal crown or any of the Royal flags,

• (c) a representation of Her Majesty or any member of the Royal family, or any colourable imitation thereof, or

• (d) words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation,

shall not be registered unless it appears to the registrar that consent has been given by or on behalf of Her Majesty or, as the case may be, the relevant member of the Royal family.

• (2) A trade mark which consists of or contains a representation of—

• (a) the national flag of the United Kingdom (commonly known as the Union Jack), or

• (b) the flag of England, Wales, Scotland, Northern Ireland or the Isle of Man,

shall not be registered if it appears to the registrar that the use of the trade mark would be misleading or grossly offensive.

Provision may be made by rules identifying the flags to which paragraph (b) applies.

• (3) A trade mark shall not be registered in the cases specified in—

• section 57 (national emblems, &c. of Convention countries), or

• section 58 (emblems, &c. of certain international organisations).

• (4) Provision may be made by rules prohibiting in such cases as may be prescribed the registration of a trade mark which consists of or contains—

• (a) arms to which a person is entitled by virtue of a grant of arms by the Crown, or

• (b) insignia so nearly resembling such arms as to be likely to be mistaken for them,

unless it appears to the registrar that consent has been given by or on behalf of that person.

Where such a mark is registered, nothing in this Act shall be construed as authorising its use in any way contrary to the laws of arms.

• (5) A trade mark which consists of or contains a controlled representation within the meaning of the Olympic Symbol etc. (Protection) Act 1995 shall not be registered unless it appears to the registrar—

• (a) that the application is made by the person for the time being appointed under section 1(2) of the Olympic Symbol etc. (Protection) Act 1995 (power of Secretary of State to appoint a person as the proprietor of the Olympics association right), or

• (b) that consent has been given by or on behalf of the person mentioned in paragraph (a) above.

Relative grounds for refusal of registration.

5

• (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.

• (2) A trade mark shall not be registered if because—

• (a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or

• (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

• (3) A trade mark which—

• (a) is identical with or similar to an earlier trade mark, and

• (b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom ... and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

• (3A) Subsection (3) applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.

• (4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented—

• (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, where the condition in subsection (4A) is met,

• (aa) by virtue of ... any enactment or rule of law, providing for protection of designations of origin or geographical indications, where the condition in subsection (4B) is met, or

• (b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) or (aa) above, in particular by virtue of the law of copyright or the law relating to industrial property rights.

A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an “earlier right” in relation to the trade mark.

• (4A) The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application.

• (4B) The condition mentioned in subsection 4(aa) is that—

• (a) an application for a designation of origin or a geographical indication has been submitted prior to the date of application for registration of the trade mark or the date of the priority claimed for that application, and

• (b) the designation of origin or (as the case may be) geographical indication is subsequently registered.

• (5) Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.

• (6) Where an agent or representative (“R”) of the proprietor of a trade mark applies, without the proprietor’s consent, for the registration of the trade mark in R’s own name, the application is to be refused unless R justifies that action.

Grounds for refusal relating to only some of the goods or services

5A

Where grounds for refusal of an application for registration of a trade mark exist in respect of only some of the goods or services in respect of which the trade mark is applied for, the application is to be refused in relation to those goods and services only.

Meaning of “earlier trade mark”.

6

• (1) In this Act an “earlier trade mark” means—

• (a) a registered trade mark ... or international trade mark (UK) ... which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks,

• (aa) a comparable trade mark (EU) or a trade mark registered pursuant to an application made under paragraph 25 of Schedule 2A which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired;

• (ab) a comparable trade mark (IR) or a trade mark registered pursuant to an application made under paragraph 28, 29 or 33 of Schedule 2B which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired;

• (b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (ba) a registered trade mark or international trade mark (UK) which—

• (i) prior to IP completion day has been converted from a European Union trade mark or international trade mark (EC) which itself had a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired, and

• (ii) accordingly has the same claim to seniority, or

• (c) a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark.

• (1A) In subsection (1), “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008.

• (2) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of subsection (1)(a) ..., subject to its being so registered (taking account of subsection (2C)).

• (2A) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made pursuant to paragraph 25 of Schedule 2A and which if registered would be an earlier trade mark by virtue of subsection (1)(aa), subject to its being so registered.

• (2B) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made pursuant to paragraph 28, 29 or 33 of Schedule 2B and which if registered would be an earlier trade mark by virtue of subsection (1)(ab), subject to its being so registered.

• (2C) Where an application for registration of a trade mark has been made pursuant to paragraph 25 of Schedule 2A or paragraph 28, 29 or 33 of Schedule 2B, subsection (l)(a) is to apply as if the date of application for registration of the trade mark were—

• (a) in the case of an application made pursuant to paragraph 25 of Schedule 2A, the relevant date referred to in paragraph 25(2) in respect of that application;

• (b) in the case of an application made pursuant to paragraph 28 of Schedule 2B, the relevant date referred to in paragraph 28(2) in respect of that application (taking account of paragraph 28(5));

• (c) in the case of an application made pursuant to paragraph 29 of Schedule 2B, the relevant date referred to in paragraph 29(2) in respect of that application (taking account of paragraph 29(4));

• (d) in the case of an application made pursuant to paragraph 33 of Schedule 2B, the relevant date referred to in paragraph 33(2) or (3) (as the case may be) in respect of that application (taking account of paragraph 33(4)).

• (3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Raising of relative grounds in opposition proceedings in case of non-use

6A

• (1) This section applies where—

• (a) an application for registration of a trade mark has been published,

• (b) there is an earlier trade mark of a kind falling within section 6(1)(a), (aa) or (ba) in relation to which the conditions set out in section 5(1), (2) or (3) obtain, and

• (c) the registration procedure for the earlier trade mark was completed before the start of the relevant period.

• (1A) In this section “the relevant period” means the period of 5 years ending with the date of the application for registration mentioned in subsection (1)(a) or (where applicable) the date of the priority claimed for that application.

• (2) In opposition proceedings, the registrar shall not refuse to register the trade mark by reason of the earlier trade mark unless the use conditions are met.

• (3) The use conditions are met if—

• (a) within the relevant period the earlier trade mark has 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, or

• (b) the earlier trade mark has not been so used, but there are proper reasons for non-use.

• (4) For these purposes—

• (a) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor), and

• (b) 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.

• (5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (5A) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (6) Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services.

• (7) Nothing in this section affects—

• (a) the refusal of registration on the grounds mentioned in section 3 (absolute grounds for refusal) or section 5(4)(relative grounds of refusal on the basis of an earlier right), or

• (b) the making of an application for a declaration of invalidity under section 47(2) (application on relative grounds where no consent to registration).

Raising of relative grounds in case of honest concurrent use.

7

• (1) This section applies where on an application for the registration of a trade mark it appears to the registrar—

• (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,