The Trade Marks (Isle of Man) Order 2013

(11A) (1) The proprietor of a trade mark is entitled to prohibit the use of a sign only to the extent that the registration of the trade mark is not liable to be revoked pursuant to section 46(1)(a) or (b) (revocation on basis of non-use) at the date the action for infringement is brought. (2) Subsection (3) applies in relation to an action for infringement of a registered trade mark where the registration procedure for the trade mark was completed before the start of the period of five years ending with the date the action is brought. (3) If the defendant so requests, the proprietor of the trade mark must furnish proof— (a) that during the five-year period preceding the date the action for infringement is brought, the trade mark has been put to genuine use in the United Kingdom by or with the consent of the proprietor in relation to the goods and services for which it is registered and which are cited as justification for the action, or (b) that there are proper reasons for non-use. (4) Nothing in subsections (2) and (3) overrides any provision of section 46, as applied by subsection (1) (including the words from “Provided that” to the end of subsection (3)).

10A

• (1) Section 24 (assignment, &c of registered trade mark) is amended as follows.

• (2) After subsection (1) insert—

(1A) A contractual obligation to transfer a business is to be taken to include an obligation to transfer any registered trade mark, except where there is agreement to the contrary or it is clear in all the circumstances that this presumption should not apply.

11A

• (1) Section 27 (application for registration of trade mark as an object of property) is amended as follows.

• (2) In subsection (1) after “sections 22 to 26 (which relate to a registered trade mark as an object of property)” insert “and sections 28 to 31 (which relate to licensing)”.

11B

• (1) Section 28 (licensing of registered trade mark) is amended as follows.

• (2) After subsection (4) insert—

(5) The proprietor of a registered trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in the licence with regard to— (a) its duration, (b) the form covered by the registration in which the trade mark may be used, (c) the scope of the goods or services for which the licence is granted, (d) the territory in which the trade mark may be affixed, or (e) the quality of the goods manufactured or of the services provided by the licensee.

11C

• (1) Section 30 is amended as follows.

• (2) After subsection (1) insert—

(1A) Except so far as the licence provides otherwise a licensee may only bring proceedings for infringement of the registered trade mark with the consent of the proprietor (but see subsections (2) and (3)).

• (3) In subsection (2), for “A licensee is entitled, unless his licence or any licence through which his interest is derived, provides otherwise, to” substitute “An exclusive licensee may”.

• (4) In subsection (3) after “If the proprietor” insert “mentioned in subsection (2)” and before “licensee” insert “exclusive”.

• (5) In subsection (4), after “by virtue of this section” insert “or with the consent of the proprietor or pursuant to the licence”.

• (6) After subsection (6), insert—

(6A) Where the proprietor of a registered trade mark brings infringement proceedings, a licensee who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.

11D

• (1) Section 32 (application for registration) is amended as follows.

• (2) In subsection (2)(d) after “mark” insert “, which is capable 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”.

11E

Section 38 (publication, opposition proceedings and observations) is amended as follows.

• (2) After subsection (2) insert—

(2A) Where a notice of opposition is filed on the basis of one or more earlier trade marks or other earlier rights— (a) the rights (if plural) must all belong to the same proprietor; (b) the notice may be filed on the basis of part, or the totality, of the goods or services in respect of which the earlier right is protected or applied for. (2B) A notice of opposition may be directed against part or the totality of the goods or services in respect of which the contested mark is applied for.

12A

• (1) Section 41 (registration: supplementary provisions) is amended as follows.

• (2) After subsection (1)(a) insert—

(aa) the division of a registration of a trade mark into several registrations;

• (3) In subsection (3)(b), after each reference to “application” insert “or registration” and after “applications” insert “or registrations”.

12B

• (1) Section 43 (renewal of registration) is amended as follows.

• (2) After subsection (3) insert—

(3A) If a request for renewal is made or the renewal fee is paid in respect of only some of the goods or services for which the trade mark is registered, the registration is to be renewed for those goods or services only.

12C

• (1) Section 46 (revocation of registration) is amended as follows.

• (2) In subsection (2)—

• (a) after “a form” insert “(the “variant form”)”; and

• (b) after “in which it was registered” insert “(regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)”.

13A

• (1) Section 49 (collective marks) is amended as follows.

• (2) For subsection (1) substitute—

(1) A collective mark is a mark which is described as such when it is applied for and is capable of distinguishing the goods and services of members of the association which is the proprietor of the mark from those of other undertakings. (1A) The following may be registered as the proprietor of a collective mark— (a) an association of manufacturers, producers, suppliers of services or traders which has the capacity in its own name to enter into contracts and to sue or be sued; and (b) a legal person governed by public law.

13B

• (1) Section 50 (certification marks) is amended as follows.

• (2) In subsection (1) for “indicating” substitute “which is described as such when the mark is applied for and indicates”.

13C

In the heading of Part II and in the italic heading before section 51, for “Community” substitute “European Union”.

13D

For section 51 (meaning of “Community trade mark”) substitute—

(51) In this Act— - “European Union trade mark” has the meaning given by Article 1(1) of the European Union Trade Mark Regulation; and - “the European Union Trade Mark Regulation” means Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark (as it had effect immediately before exit day)

18A

Omit section 60 (acts of agent or representative: Article 6septies).

18B

At the end of Part 2 insert—

(60A) (1) For the purposes of this Act goods and services— (a) are not to be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification; (b) are not to be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification. (2) In subsection (1), the “Nice Classification” means the system of classification under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, which was last amended on 28 September 1979[^f00006].

25A

• (1) Section 88 (power of registrar to refuse to deal with certain agents) is amended as follows.

• (2) In subsection (1)(b) for “an individual” substitute “a person”.

• (3) In subsection (1)(c) for—

• (a) “an individual” substitute “a person”;

• (b) “him” substitute “the person”; and

• (c) “his” substitute “the person’s”.

33A

After section 99 (unauthorised use of Royal arms, &c.), insert—

(99A) (1) Subsection (2) applies if the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference work, in print or electronic form, gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered. (2) The publisher of the work must, at the request in writing of the proprietor of the trade mark, ensure that the reproduction of the trade mark is accompanied by an indication that it is a registered trade mark. (3) The action required by subsection (2) must be taken— (a) without delay, and (b) in the case of works in printed form, at the latest in the next edition of the publication. (4) If the publisher fails to take any action required by subsection (2) the court may, on an application by the proprietor— (a) order the publisher to take the action concerned; (b) if the work is in printed form, order the publisher to erase or amend the reproduction of the trade mark or secure the destruction of copies of the work in the publisher’s possession, custody or control; or (c) grant such other order as the court in the circumstances considers appropriate.

6D

In section 12 (exhaustion of rights conferred by a registered trade mark), in subsection (1), after “market in” insert “the United Kingdom or”.

14A

Before the italic heading before section 53, insert—

(52A) Schedule 2A makes provision for European Union trade marks (including certain expired and removed marks) to be treated as registered trade marks with effect from exit day and about certain applications for a European Union trade mark made before exit day.

15A

After section 54 (and before the italic heading before section 55), insert—

(54A) Schedule 2B makes provision for international trade marks protected in the European Union (including certain expired marks) to be treated as registered trade marks with effect from exit day and about certain applications for the protection of an international trade mark in the European Union and transformation applications made before exit day.

40

After Schedule 2, insert—