39A Registration of trade mark following overseas application.
(1) Any person who has applied for protection for any trade mark in a relevant country or his legal representative or assignee shall be entitled on an application for registration made within six months of the application for protection in the relevant country to registration of his mark under this Act in priority to other applicants.
(2) A mark registered on an application made under this section shall be registered as of the date of the application in the relevant country and that date shall be deemed for the purposes of this Act to be the date of registration.
(3) Nothing in this section shall entitle the proprietor of the mark to recover damages for infringements happening prior to the date of the application for registration under this Act.
(4) The registration of a mark under this section shall not be invalidated by reason only of the use of the mark in the United Kingdom during the period of 6 months within which the application may be made.
(5) The application for the registration of a mark under this section must be made in the same manner as an ordinary application under this Act.
(6) Where a person has applied for protection for any mark by an application which—
(a) in accordance with the terms of a treaty subsisting between any two or more relevant countries, is equivalent to an application duly made in any one of those countries; or
(b) in accordance with the law of any relevant country, is equivalent to an application duly made in that country,
he shall be deemed for the purposes of this section to have applied in that country.
(7) Subject to subsection (8) below, Her Majesty may by Order in Council direct that this section shall apply to a country specified in the Order.
(8) If a country is not a dependent territory, an Order in Council under this section may only be made in relation to it with a view to the fulfilment of a treaty, convention, arrangement or engagement.
(9) An order in Council under this section shall be subject to annulment in pursuance of a resolution of either House of Parliament and may be varied or revoked by a subsequent Order.
(10) In this section—
“country” includes any territory;
“dependent territory” means any of the Channel Islands or a colony;
“relevant country” means a country which was specified in an Order in Council under this section at the time of the application under this section or such other time as may be specified in the Order in Council.
(1) The Board of Trade may from time to time make such rules, prescribe such forms and generally do such things as they think expedient—
(a) for regulating the practice under this Act, including the service of documents;
(b) for classifying goods for the purposes of registration of trade marks;
(c) for making or requiring duplicates of trade marks and other documents;
(d) for securing and regulating the publishing and selling or distributing, in such manner as the Board of Trade think fit, of copies of trade marks and other documents;
(e) generally, for regulating the business of the Patent Office in relation to trade marks and all things by this Act placed under the direction or control of the Registrar or of the Board of Trade.
(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(3) Before making any rules under this Act, the Board of Trade shall publish notice of their intention to make the rules and of the place where copies of the draft rules may be obtained, in such manner as the Board consider most expedient so as to enable persons affected to make representations to the Board before the rules are finally settled.
(4) Any rules so made shall be forthwith advertised twice in the Trade Marks Journal, and shall be laid before both Houses of Parliament, . . .
(5) If either House of Parliament, within the next forty days after any rules have been so laid before it, resolves that the rules or any of them ought to be annulled, the rule or rules shall henceforth be of no effect, but without prejudice to the validity of anything previously done thereunder or to the making of any new rule or rules.
(1) Rules under section 40 of this Act may specify the hour at which the Patent Office shall be deemed to be closed on any day for purposes of the transaction by the public of business under this Act or of any class of such business, and may specify days as excluded days for any such purposes.
(2) Any business done under this Act on any day after the hour specified as aforesaid in relation to business of that class, or on a day which is an excluded day in relation to business of that class, shall be deemed to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act expires on an excluded day, that time shall be extended to the next following day not being an excluded day.
There shall be paid in respect of applications and registration and other matters under this Act such fees as may be, with the sanction of the Treasury, prescribed by the Board of Trade.
42 Preliminary advice by Registrar as to distinctiveness.
(1) The power to give to a person who proposes to apply for the registration of a trade mark in Part A or Part B of the register advice as to whether the trade mark appears to the Registrar prima facie to be inherently adapted to distinguish, or capable of distinguishing, as the case may be, shall be a function of the Registrar under this Act.
(2) Any such person who is desirous of obtaining such advice must make application to the Registrar therefor in the prescribed manner.
(3) If on an application for the registration of a trade mark as to which the Registrar has given advice as aforesaid in the affirmative, made within three months after the advice is given, the Registrar, after further investigation or consideration, gives notice to the applicant of objection on the ground that the trade mark is not adapted to distinguish, or capable of distinguishing, as the case may be, the applicant shall be entitled, on giving notice of withdrawal of the application within the prescribed period, to have repaid to him any fee paid on the filing of the application.
43 Hearing before exercise of Registrar’s discretion.
Where any discretionary or other power is given to the Registrar by this Act or the rules, he shall not exercise that power adversely to the applicant for registration or the registered proprietor of the trade mark in question without (if duly required so to do within the prescribed time) giving to the applicant or registered proprietor an opportunity of being heard.
In all proceedings before the Registrar under this Act, the Registrar shall have power to award to any party such costs as he may consider reasonable, and to direct how and by what parties they are to be paid, and any such order may, by leave of the Court or a judge thereof, be enforced in the same manner as a judgment or order of the Court to the same effect.
The Comptroller-General of Patents, Designs and Trade Marks shall, in his annual report on the execution by or under him of the Patents and Designs Act 1907, and Acts amending that Act, include a report respecting the execution by or under him of this Act as if it formed a part of or was included in those Acts.
46 Registration to be prima facie evidence of validity.
In all legal proceedings relating to a registered trade mark (including applications under section thirty-two of this Act) the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.
In any legal proceeding in which the validity of the registration of a registered trade mark comes into question and is decided in favour of the proprietor of the trade mark, the Court may certify to that effect, and if it so certifies then in any subsequent legal proceeding in which the validity of the registration comes into question the proprietor of the trade mark on obtaining a final order or judgment in his favour shall have his full costs, charges and expenses as between solicitor and client, unless in the subsequent proceeding the Court certifies that he ought not to have them.
48 Costs of Registrar in proceedings before Court, and payment of costs by Registrar.
(1) In all proceedings before the Court under this Act the costs of the Registrar shall be in the discretion of the Court, but in any proceedings in England or Northern Ireland, the Registrar shall not, except in accordance with the provisions of subsection (2) of this section in a case in which he has appeared in the proceedings, be ordered to pay the costs of any other of the parties.
(2) Where the Registrar appears in any proceedings before the Court in England or Northern Ireland under this Act, section seven of the Administration of Justice (Miscellaneous Provisions) Act 1933, or any corresponding enactment which may be passed by the Parliament of Northern Ireland, as the case may be, shall have effect as it has effect in relation to other proceedings to which the Crown is a party in a court having the power to award costs in cases between subjects.
In any action or proceeding relating to a trade mark or trade name, the tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get-up legitimately used by other persons.
50 Registrar’s appearance in proceedings involving rectification.
(1) In any legal proceeding in which the relief sought includes alteration or rectification of the register, the Registrar shall have the right to appear and be heard, and shall appear if so directed by the Court.
(2) Unless otherwise directed by the Court, the Registrar in lieu of appearing and being heard may submit to the Court a statement in writing signed by him, giving particulars of the proceedings before him in relation to the matter in issue or of the grounds of any decision given by him affecting it or of the practice of the Patent Office in like cases or of such other matters relevant to the issues, and within his knowledge as Registrar, as he thinks fit, and the statement shall be deemed to form part of the evidence in the proceeding.
The Court, in dealing with any question of the rectification of the register (including all applications under the provisions of section thirty-two of this Act), shall have power to review any decision of the Registrar relating to the entry in question or the correction sought to be made.
In any appeal from a decision of the Registrar to the Court under this Act, the Court shall have and exercise the same discretionary powers as under this Act are conferred upon the Registrar.
Where under this Act an appeal is made to the Board of Trade, the Board of Trade may, if they think fit, refer the appeal to the Court in lieu of hearing and deciding it themselves, but, unless the Board so refer the appeal, it shall be heard and decided by the Board, and the decision of the Board shall be final.
54 Procedure in cases of option to apply to Court or Registrar.
Where under any of the foregoing provisions of this Act an applicant has an option to make an application either to the Court or to the Registrar—
(a) if an action concerning the trade mark in question is pending, the application must be made to the Court;
(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, or he may, after hearing the parties, determine the question between them, subject to appeal to the Court.
In any proceeding under this Act before the Board of Trade or the Registrar, the evidence shall be given by statutory declaration in the absence of directions to the contrary, but, in any case in which the tribunal thinks it right so to do, the tribunal may take evidence viva voce in lieu of or in addition to evidence by declaration. Any such statutory declaration may in the case of appeal be used before the Court in lieu of evidence by affidavit, but if so used shall have all the incidents and consequences of evidence by affidavit.
In case any part of the evidence is taken viva voce, the Board of Trade or the Registrar shall, in respect of requiring the attendance of witnesses and taking evidence on oath, be in the same position in all respects as a Circuit judge discharging the functions of an official referee of the Supreme Court.
(1) All documents purporting to be orders made by the Board of Trade and to be sealed with the seal of the Board, or to be signed by a secretary or an under-secretary or an assistant secretary of the Board, or by any person authorised in that behalf by the President of the Board, shall be received in evidence, and shall be deemed to be such orders without further proof, unless the contrary is shown.
(2) A certificate, signed by the President of the Board of Trade, that any order made or act done is the order or act of the Board, shall be conclusive evidence of the fact so certified.
58A Fraudulent application or use of trade mark an offence.
(1) It is an offence, subject to subsection (3) below, for a person—
(a) to apply a mark identical to or nearly resembling a registered trade mark to goods, or to material used or intended to be used for labelling, packaging or advertising goods, or
(b) to sell, let for hire, or offer or expose for sale or hire, or distribute—
(i) goods bearing such a mark, or
(ii) material bearing such a mark which is used or intended to be used for labelling, packaging or advertising goods, or
(c) to use material bearing such a mark in the course of a business for labelling, packaging or advertising goods, or
(d) to possess in the course of a business goods or material bearing such a mark with a view to doing any of the things mentioned in paragraphs (a) to (c),
when he is not entitled to use the mark in relation to the goods in question and the goods are not connected in the course of trade with a person who is so entitled.
(2) It is also an offence, subject to subsection (3) below, for a person to possess in the course of a business goods or material bearing a mark identical to or nearly resembling a registered trade mark with a view to enabling or assisting another person to do any of the things mentioned in subsection (1)(a) to (c), knowing or having reason to believe that the other person is not entitled to use the mark in relation to the goods in question and that the goods are not connected in the course of trade with a person who is so entitled.
(3) A person commits an offence under subsection (1) or (2) only if—
(a) he acts with a view to gain for himself or another, or with intent to cause loss to another, and
(b) he intends that the goods in question should be accepted as connected in the course of trade with a person entitled to use the mark in question;
and it is a defence for a person charged with an offence under subsection (1) to show that he believed on reasonable grounds that he was entitled to use the mark in relation to the goods in question.
(4) A person guilty of an offence under this section is liable—
(a) on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both;
(b) on conviction on indictment to a fine or imprisonment for a term not exceeding ten years, or both.
(5) Where an offence under this section committed by a body corporate is proved to have been committed with the consent or connivance of a director, manager, secretary or other similar officer of the body, or a person purporting to act in any such capacity, he as well as the body corporate is guilty of the offence and liable to be proceeded against and punished accordingly.
In relation to a body corporate whose affairs are managed by its members’ “director” means a member of the body corporate.
(6) In this section “business” includes a trade or profession.
(1) The court by which a person is convicted of an offence under section 58A may, if satisfied that at the time of his arrest or charge he had in his possession, custody or control—
(a) goods or material in respect of which the offence was committed, or
(b) goods of the same description as those in respect of which the offence was committed, or material similar to that in respect of which the offence was committed, bearing a mark identical to or nearly resembling that in relation to which the offence was committed,
order that the goods or material be delivered up to such person as the court may direct.
(2) For this purpose a person shall be treated as charged with an offence—
(a) In England, Wales and Northern Ireland, when he is orally charged or is served with a summons or indictment;
(b) in Scotland, when he is cautioned, charged or served with a complaint or indictment.
(3) An order may be made by the court of its own motion or on the application of the prosecutor (or, in Scotland, the Lord Advocate or procurator-fiscal), but shall not be made if it appears to the court unlikely that any order will be made under section 58C (order as to disposal of offending goods or material).
(4) An appeal lies from an order made under this section by a magistrates’ court—
(a) in England and Wales, to the Crown Court, and
(b) in Northern Ireland, to the county court;
and in Scotland, where an order has been made under this section, the person from whose possession, custody or control the goods or material have been removed may, without prejudice to any other form of appeal under any rule of law, appeal against that order in the same manner as against sentence.
(5) A person to whom goods or material are delivered up in pursuance of an order under this section shall retain it pending the making of an order under section 58C.
(6) Nothing in this section affects the powers of the court under section 43 of the Powers of Criminal Courts Act 1973, section 223 or 436 of the Criminal Procedure (Scotland) Act 1975 or Article 7 of the Criminal Justice (Northern Ireland) Order 1980 (general provisions as to forfeiture in criminal proceedings).
58C Order as to disposal of offending goods or material.
(1) Where goods or material have been delivered up in pursuance of an order under section 58B, an application may be made to the court for an order that they be destroyed or forfeited to such person as the court may think fit.
(2) Provision shall be made by rules of court as to the service of notice on persons having an interest in the goods or material, and any such person is entitled—
(a) to appear in proceedings for an order under this section, whether or not he was served with notice, and
(b) to appeal against any order made, whether or not he appeared;
and an order shall not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal.
(3) Where there is more than one person interested in goods or material, the court shall make such order as it thinks just.
(4) References in this section to a person having an interest in goods or material include any person in whose favour an order could be made under this section or under sections 114, 204 or 231 of the Copyright, Designs and Patents Act 1988 (which make similar provision in relation to infringement of copyright, rights in performances and design right).
(5) Proceedings for an order under this section may be brought—
(a) in a county court in England, Wales and Northern Ireland, save that in Northern Ireland such proceedings may be brought in a county cour t only where the value of the goods or material in question does not exceed the county court limit for actions in tort, and
(b) in a sheriff court in Scotland;
but this shall not be construed as affecting the jurisdiction of the High Court or, in Scotland, the Court of Session.
(1) The functions of a local weights and measures authority include the enforcement in their area of section 58A.
(2) The following provisions of the Trade Descriptions Act 1968 apply in relation to the enforcement of that section as in relation to the enforcement of that Act—
section 27 (power to make test purchases),
section 28 (power to enter premises and inspect and seize goods and documents),
section 29 (obstruction of authorised officers), and
section 33 (compensation for loss, &c. of goods seized under s. 28).
(3) Subsection (1) above does not apply in relation to the enforcement of section 58A in Northern Ireland, but the functions of the Department of Economic Development include the enforcement of that section in Northern Ireland.
For that purpose the provisions of the Trade Descriptions Act 1968 specified in subsection (2) apply as if for the references to a local weights and measures authority and any officer of such an authority there were substituted references to that Department and any of its officers.
(4) Any enactment which authorises the disclosure of information for the purpose of facilitating the enforcement of the Trade Descriptions Act 1968 shall apply as if section 58A above were contained in that Act and as if the functions of any person in relation to the enforcement of that section were functions under that Act.
59 Falsification of entries in register a misdemeanour.
(1) If any person makes or causes to be made a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of a misdemeanour.
(2) In the Isle of Man the punishment for an offence under this section shall be imprisonment for any term not exceeding two years, with or without hard labour and with or without a fine not exceeding one hundred pounds, at the discretion of the court.
60 Fine for falsely representing a trade mark as registered.
(1) Any person who makes a representation—
(a) with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; or
(b) with respect to a part of a registered trade mark not being a part separately registered as a trade mark, to the effect that it is so registered; or
(c) to the effect that a registered trade mark is registered in respect of any goods in respect of which it is not registered; or
(d) to the effect that the registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitations entered on the register, the registration does not give that right;
shall be liable on summary conviction to a fine not exceeding level 3 on the standard scale
(2) For the purposes of this section, the use in the United Kingdom in relation to a trade mark of the word “registered”, or of any other word referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except—
(a) where the word is used in physical association with other words delineated in characters at least as large as those in which that word is delineated and indicating that the reference is to registration as a trade mark under the law of a country outside the United Kingdom, being a country under the law of which the registration referred to is in fact in force;
(b) where that word (being a word other than the word “registered”) is of itself such as to indicate that the reference is to such registration as last aforesaid; or
(c) where that word is used in relation to a mark registered as a trade mark under the law of a country outside the United Kingdom and in relation to goods to be exported to that country.
(3) An offence under this section committed in the Isle of Man may be prosecuted, and any fine in respect thereof recovered, at the instance of any person aggrieved, in the manner in which offences punishable on summary conviction may for the time being be prosecuted.
If any person, without the authority of His Majesty, uses, in connection with any trade, business, calling or profession, the Royal Arms (or arms so closely resembling the same as to be calculated to deceive) in such manner as to be calculated to lead to the belief that he is duly authorised so to use the Royal Arms, or if any person, without the authority of His Majesty or of a member of the Royal Family, uses, in connection with any trade, business, calling or profession, any device, emblem or title in such manner as to be calculated to lead to the belief that he is employed by, supplies goods to or provides services for, His Majesty or such member of the Royal Family, he may, at the suit of any person who is authorised to use such arms or such device, emblem or title, or is authorised by the Lord Chamberlain to take proceedings in that behalf, be restrained by injunction from continuing so to use the same:
Provided that nothing in this section shall be construed as affecting the right, if any, of the proprietor of a trade mark containing any such arms, device, emblem or title to continue to use such trade mark.
62 Change of form of trade connection not to be deemed to cause deception.
The use of a registered trade mark in relation to goods between which and the person using it any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the trade mark has been, or is, used in relation to goods between which and that person or a predecessor in title of his a different form of connection in the course of trade subsisted or subsists.
Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except—
(a) on behalf of both or all of them, or
(b) in relation to an article with which both or all of them are connected in the course of trade,
those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person.
Subject as aforesaid, nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.
(1) There shall not be entered in the register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the Registrar.
(2) Subject to the provisions of this Act, equities in respect of a trade mark may be enforced in like manner as in respect of any other personal property.
(1) The person who is registered as the proprietor or registered user of a trade mark in respect of any goods may give notice in writing to the Commissioners of Customs and Excise (in this section referred to as the Commissioners)—
(a) that he is the proprietor or registered user of that trade mark, and
(b) that such goods bearing the trade mark are expected to arrive in the United Kingdom at a time and place and by a consignment specified in the notice, and
(c) that the use within the United Kingdom of the trade mark in relation to the goods would infringe the proprietor’s exclusive right to that use, and
(d) that he requests the Commissioners to treat the goods as prohibited goods.
(2) Where a notice has been given under this section in respect of any goods bearing a trade mark and has not been withdrawn and the requirements of any regulations made under this section are complied with, then, subject to the following provisions of this section, the importation into the United Kingdom of the goods shall, if the condition of paragraph (c) of the preceding subsection is satisfied, be deemed to be prohibited unless the importation is for the private and domestic use of the person importing the goods.
(3) The Commissioners may make regulations prescribing the form in which notices are to be given under this section, and requiring a person giving such a notice, either at the time of giving the notice or at the time when the goods in question are imported, or at both those times, to furnish the Commissioners with such evidence, and to comply with such other conditions (if any), as may be specified in the regulations, and any such regulations may include such incidental and supplementary provisions as the Commissioners consider expedient for the purposes of this section.
(4) Without prejudice to the generality of the preceding subsection, regulations made under that subsection may include provision for requiring a person who has given a notice under subsection (1) of this section, or a notice purporting to be a notice under that subsection,—
(a) to pay such fees in respect of the notice as may be prescribed by the regulations;
(b) to give to the Commissioners such security as may be so prescribed, in respect of any liability or expense which they may incur in consequence of the detention of any goods to which the notice relates, or in consequence of anything done in relation to goods so detained;
(c) whether any such security is given or not, to keep the Commissioners indemnified against any such liability or expense as is mentioned in the preceding paragraph.
(5) For the purposes ofsection 17 of the Customs and Excise Management Act 1979 (which relates to the disposal of duties) any fees paid in pursuance of regulations made under this section shall be treated as money collected on account of duties (whether of customs or excise) charged on imported goods.
(6) Regulations under subsection (3) of this section shall be made by statutory instrument, which shall be subject to annulment in pursuance of a resolution of either House of Parliament].
65 Saving for jurisdiction of courts in Scotland, Northern Ireland and Isle of Man.
Where by this Act any act has to be done by or to any person in connection with a trade mark or proposed trade mark or any procedure relating thereto, the act may under and in accordance with the rules, or in particular cases by special leave of the Board of Trade, be done by or to an agent of that person duly authorised in the prescribed manner.
(1) The provision of this Act conferring a special jurisdiction on the Court as defined by this Act shall not, except so far as the jurisdiction extends, affect the jurisdiction of any court in Scotland or Northern Ireland in any proceedings relating to trade marks; and with reference to any such proceedings in Scotland the expression “the Court” means the Court of Session; and with reference to any such proceedings in Northern Ireland the expression “the Court” means the High Court of Justice in Northern Ireland.
(2) Nothing in this Act shall affect the jurisdiction of the courts in the Isle of Man in proceedings for infringement or in any action or proceeding respecting a trade mark competent to those courts.
(1) In this Act, unless the context otherwise requires, the following expressions have the meanings hereby assigned to them respectively, that is to say:—
“the appointed day” has the meaning assigned to it by section seventy-one of this Act;
“assignment” means assignment by act of the parties concerned;
“the Court” means (subject to provisions relating to Scotland, Northern Ireland or the Isle of Man) His Majesty’s High Court of Justice in England;
“limitations” means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold, or otherwise traded in, in any place within the United Kingdom, or as to use in relation to goods to be exported to any market outside the United Kingdom;
“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof;
“permitted use” has the meaning assigned to it by subsection (1) of section twenty-eight of this Act;
“prescribed” means, (subject to provisions relating to Northern Ireland) in relation to proceedings before the Court, prescribed by rules of court, and, in other cases, prescribed by this Act or the rules;
“the register” means the register of trade marks kept under this Act;
“registered trade mark” means a trade mark that is actually on the register;
“registered user” means a person who is for the time being registered as such under section twenty-eight of this Act;
“the Registrar” means the Comptroller-General of Patents, Designs and Trade Marks;
“the rules” means rules made by the Board of Trade under section thirty-six or section forty of this Act;
“trade mark” means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under section thirty-seven of this Act;
“transmission” means transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer not being assignment;
“United Kingdom” includes the Isle of Man.
(2) References in this Act to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references therein to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods.
(2A) For the purposes of this Act goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business, and so with descriptions of goods and descriptions of services.
(2B) References in this Act to a near resemblance of marks are references to a resemblance so near as to be likely to deceive or cause confusion.
(3) In the application of this Act to Scotland, the expressions “injunction,” “plaintiff” and “defendant” means respectively “interdict,” “pursuer” and “defender.”
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(2) Nothing in this Act shall affect any order, rule, regulation or requirement made, table of fees or certificate issued, notice, decision, determination, direction or approval given, application made, or thing done, under any enactment repealed by this Act; and every such order, rule, regulation, requirement, table of fees, certificate, notice, decision, determination, direction, approval, application or thing shall, if in force at the commencement of this Act, continue in force and shall, so far as it could have been made, issued, given or done under this Act, have effect as if made, issued, given or done under the corresponding enactment of this Act.
(3) Any document referring to any enactment repealed by this Act shall be construed as referring to the corresponding enactment of this Act.
(4) Nothing in this section shall be taken to prejudice the provisions of sections 16 and 17 (2)(a) of the Interpretation Act 1978.
(1) This Act may be cited as the Trade Marks Act 1938.
(2) This Act shall come into operation on the date fixed by order made under subsection (5) of section thirty-three of the Trade Marks (Amendment) Act, 1937, for the coming into operation of that Act (in this Act referred to as “the appointed day”), immediately after the coming into operation of that Act.
(3) It is hereby declared that this Act extends to Northern Ireland.
(4) This Act shall extend to the Isle of Man.
1 (1) An application for the registration of a mark under section thirty-seven of this Act must be made to the Registrar in writing in the prescribed manner by the person proposed to be registered as the proprietor thereof.
(2) The provisions of subsection (2) and of subsections (4) to (7) of section seventeen of this Act shall have effect in relation to an application under the said section thirty-seven as they have effect in relation to an application under subsection (1) of the said section seventeen, except that for references therein to acceptance of an application there shall be substituted references to authorisation to proceed with the application.
(3) In dealing under the said provisions with an application under the said section thirty-seven the tribunal shall have regard to the like considerations, so far as relevant, as if the application were an application under section seventeen of this Act and to any other considerations (not being matters within the competence of the Board of Trade under subparagraph (5) of this paragraph) relevant to applications under the said section thirty-seven, including the desirability of securing that a certification trade mark shall comprise some indication that it is such a trade mark.
(4) An applicant for the registration of a mark under the said section thirty-seven shall transmit to the Registrar draft regulations for governing the use thereof at such time before the decision of the Registrar on the application as he may require in order to enable him to consider the draft, and the Registrar shall report thereon to the Board of Trade.
(5) When authorisation to proceed with an application has been given, the Board of Trade shall consider the application with regard to the following matters, that is to say:—
(a) whether the applicant is competent to certify the goods in respect of which the mark is to be registered;
(b) whether the draft regulations are satisfactory; and
(c) whether in all the circumstances the registration applied for would be to the public advantage;
and may either—
(i) direct that the application shall not be accepted; or
(ii) direct the Registrar to accept the application, and approve the regulations, either without modification and unconditionally or subject to any conditions or limitations, or to any amendments or modifications of the application or of the regulations, which they think requisite having regard to any of the matters aforesaid;
but, except in the case of a direction for acceptance and approval without modification and unconditionally, the Board shall not decide the matter without giving to the applicant an opportunity of being heard;
Provided that the Board may, at the request of the applicant made with the concurrence of the Registrar, consider the application with regard to any of the matters aforesaid before authorisation to proceed with the application has been given, so however that the Board shall be at liberty to reconsider any matter on which they have given a decision under this proviso if any amendment or modification is thereafter made in the application or in the draft regulations.
2 (1) When an application has been accepted, the Registrar shall, as soon as may be after such acceptance, cause the application as accepted to be advertised in the prescribed manner, and the provisions of subsections (2) to (11) of section eighteen of this Act shall have effect in relation to the registration of the mark as if the application had been an application under section seventeen of this Act;
Provided that, in deciding under the said provisions, the tribunal shall have regard only to the considerations referred to in subparagraph (3) of the last foregoing paragraph, and a decision under the said provisions in favour of the applicant shall be conditional on the determination in his favour by the Board of Trade under subparagraph (2) of this paragraph of any opposition relating to any of the matters referred to in subparagraph (5) of the last foregoing paragraph.
(2) When notice of opposition is given relating to any of the matters referred to in subparagraph (5) of the last foregoing paragraph, the Board of Trade shall, after hearing the parties, if so required, and considering any evidence, decide whether, and subject to what conditions or limitations, or amendments or modifications of the application or of the regulations, if any, registration is, having regard to those matters, to be permitted.
3 (1) The regulations deposited in respect of a certification trade mark may, on the application of the registered proprietor, be altered by the Registrar, with the consent of the Board of Trade.
(2) The Board of Trade may cause an application for their consent to be advertised in any case where it appears to the Board that it is expedient so to do, and, where the Board cause an application to be advertised, if within the prescribed time from the date of the advertisement any person gives notice to the Board of opposition to the application, the Board shall not decide the matter without giving the parties an opportunity of being heard.
4 (1) The Board of Trade may, on the application in the prescribed manner of any person aggrieved, or on the application of the Registrar, make such order as they think fit for expunging or varying any entry in the register relating to a certification trade mark, or for varying the deposited regulations, on the ground—
(a) that the proprietor is no longer competent, in the case of any of the goods in respect of which the trade mark is registered, to certify those goods;
(b) that the proprietor has failed to observe a provision of the deposited regulations to be observed on his part;
(c) that it is no longer to the public advantage that the trade mark should be registered; or
(d) that it is requisite for the public advantage that, if the trade mark remains registered, the regulations should be varied;
and neither the Court nor Registrar shall have any jurisdiction to make an order under section thirty-two of this Act on any of those grounds.
(2) The Registrar shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made under the foregoing subparagraph.
5 Notwithstanding anything in section forty-four of this Act, the Registrar shall not have any jurisdiction to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or to authorise the use of the trade mark.
6 The following provisions of this Act shall not have effect in relation to a certification trade mark, that is to say, section four, section six, section nine, sections seventeen and eighteen (except as expressly applied by this Schedule), subsections (4) to (8) of section twenty-two, sections twenty-six to twenty-nine, section sixty-two, and any provisions the operation of which is limited by the terms thereof to registration in Part B of the Register.
1 The Cutlers’ Company shall continue to keep at Sheffield the register of trade marks (in this Schedule called “the Sheffield register”) kept by them immediately before the appointed day, and, save as otherwise provided by this Schedule, the Sheffield register shall for all purposes form part of the register.
2 An application by a person carrying on business in Hallamshire, or within six miles thereof, for the registration of a trade mark in respect of metal goods may be made either to the Registrar or to the Cutlers’ Company, at the option of the applicant.
3 An application for the registration of a trade mark made to the Cutlers’ Company shall be notified to the Registrar in the prescribed manner, and the Cutlers’ Company shall not proceed with such an application until authorised so to do by the Registrar.
4 The Registrar shall consider an application notified to him as aforesaid and shall either authorise the Cutlers’ Company to proceed therewith or, if it appears to him that there is any objection to the application, shall give notice of his objection to the Cutlers’ Company, who shall communicate it to the applicant.
5 Within the prescribed time after receipt of a notice of objection under the last foregoing paragraph, the applicant may submit to the Cutlers’ Company either orally or in writing arguments against, or proposals for meeting, the objection, and the Cutlers’ Company shall notify to the Registrar any arguments or proposals so submitted to them together with any observations that they may desire to make thereon.
6 The Registrar shall consider any arguments, proposals or observations notified to him as aforesaid and shall, if so required by an applicant who has submitted arguments or proposals as aforesaid, give the applicant an opportunity of being heard by him, and may refuse authorisation to proceed with the application or may authorise the Cutlers’ Company to proceed therewith either without modification and unconditionally or subject to such conditions, amendments or modifications, or to such limitations, if any, as he may think right.
7 Where the Registrar refuses authorisation to proceed with an application, or authorises the Cutlers’ Company to proceed therewith subject as aforesaid, the provisions of subsections (4) to (6) of section seventeen of this Act shall have effect in relation to the refusal or conditional authorisation as they have effect in relation to a refusal to accept, or a conditional acceptance of, an application, except that for references therein to acceptance of the application there shall be substituted references to authorisation to the Cutlers’ Company to proceed with the application.
8 Upon the registration of a trade mark in the Sheffield register, the Cutlers’ Company shall give notice thereof to the Registrar, who shall thereupon enter the trade mark in the register, and such registration shall bear date as of the day of the application to the Cutlers’ Company and have the same effect as if the application had been made to the Registrar on that day.
9 The provisions of this Act and of the rules with respect to the registration of trade marks, and all matters relating thereto, shall, subject to the provisions of this Schedule (and notwithstanding anything in any Act relating to the Cutlers’ Company), apply to the registration of trade marks in respect of metal goods by the Cutlers’ Company and to all matters relating thereto, and this Act and the rules shall, so far as applicable, be construed accordingly with the substitution of the Cutlers’ Company, the office of the Cutlers’ Company, and the Sheffield register, for the Registrar, the Patent Office, and the register respectively, and notice of every entry, cancellation, or correction made in the Sheffield register shall be given to the Registrar by the Cutlers’ Company:
Provided that anything that by virtue of this Schedule is required or authorised to be done by, before or in relation to the Cutlers’ Company or at their office may, with the consent of the party or parties concerned, be done by, before or in relation to the Registrar or at the Patent Office, as the case may be.
10 When the Registrar receives an application for the registration of a trade mark in respect of metal goods, he shall in the prescribed manner notify the application and proceedings thereon to the Cutlers’ Company.
11 Any person aggrieved by a decision of the Cutlers’ Company in respect of anything done or omitted under this Act may, in the prescribed manner, appeal to the Court or, in a case in which, if the decision had been a decision of the Registrar, the person aggrieved would have had an option under this Act of appealing to the Board of Trade, to the Court or the Board at the option of the appellant.
12 (1) For the purposes of this Schedule the expression “metal goods” means all metals, whether wrought, unwrought, or partly wrought, and all goods which are comprised in any of such classes as may be prescribed as being classes which refer predominantly to metal goods, and are goods composed wholly or principally of any metal; and for the purpose of determining whether any goods are goods principally of any metal regard shall be had to the importance and nature of the metal part or parts of the goods having regard to the purposes for which the goods are adapted.
(2) Any question arising in connection with an application made to the Cutlers’ Company for the registration of a trade mark, as to whether the goods in respect of which the trade mark is proposed to be registered are metal goods, shall be referred to and determined by the Registrar, whose decision shall be final.
(3) The validity of the registration by the Cutlers’ Company of a trade mark shall not be questioned on the ground only that the goods in respect of which it is so registered are not metal goods.
13 A certificate purporting to be under the hand of the master of the Cutlers’ Company as to any entry, matter or thing that the Cutlers’ Company are authorised by this Schedule or the rules to make or do shall be prima facie evidence of the entry having been made and of the contents thereof and of the matter or thing having been done or not done.