(1) In this Act an “exclusive licence” means a licence (whether general or limited) authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence.
The expression “exclusive licensee” shall be construed accordingly.
(2) An exclusive licensee has the same rights against a successor in title who is bound by the licence as he has against the person granting the licence.
30 General provisions as to rights of licensees in case of infringement.
(1) This section has effect with respect to the rights of a licensee in relation to infringement of a registered trade mark.
The provisions of this section do not apply where or to the extent that, by virtue of section 31(1) below (exclusive licensee having rights and remedies of assignee), the licensee has a right to bring proceedings in his own name.
(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)).
(2) An exclusive licensee may call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects his interests.
(3) If the proprietor mentioned in subsection (2)—
(a) refuses to do so, or
(b) fails to do so within two months after being called upon,
the exclusive licensee may bring the proceedings in his own name as if he were the proprietor.
(4) Where infringement proceedings are brought by a licensee by virtue of this section or with the consent of the proprietor or pursuant to the licence, the licensee may not, without the leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant.
This does not affect the granting of interlocutory relief on an application by a licensee alone.
(5) A proprietor who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(6) In infringement proceedings brought by the proprietor of a registered trade mark any loss suffered or likely to be suffered by licensees shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of licensees.
(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.
(7) The provisions of this section apply in relation to an exclusive licensee if or to the extent that he has, by virtue of section 31(1), the rights and remedies of an assignee as if he were the proprietor of the registered trade mark.
31 Exclusive licensee having rights and remedies of assignee.
(1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.
Where or to the extent that such provision is made, the licensee is entitled, subject to the provisions of the licence and to the following provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in his own name.
(2) Any such rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trade mark; and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement shall be construed accordingly.
(3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trade mark.
(4) Where proceedings for infringement of a registered trade mark brought by the proprietor or an exclusive licensee relate wholly or partly to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.
This does not affect the granting of interlocutory relief on an application by a proprietor or exclusive licensee alone.
(5) A person who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(6) Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action—
(a) the court shall in assessing damages take into account—
(i) the terms of the licence, and
(ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement;
(b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and
(c) the court shall if an account of profits is directed apportion the profits between them as the court considers just, subject to any agreement between them.
The provisions of this subsection apply whether or not the proprietor and the exclusive licensee are both parties to the action; and if they are not both parties the court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.
(7) The proprietor of a registered trade mark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 16 (order for delivery up); and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.
(8) The provisions of subsections (4) to (7) above have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor.
(1) An application for registration of a trade mark shall be made to the registrar.
(2) The application shall contain—
(a) a request for registration of a trade mark,
(b) the name and address of the applicant,
(c) a statement of the goods or services in relation to which it is sought to register the trade mark, and
(d) a representation of the trade mark, 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.
(3) The application shall state that the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has abona fide intention that it should be so used.
(4) The application shall be subject to the payment of the application fee and such class fees as may be appropriate.
(1) The date of filing of an application for registration of a trade mark is the date on which documents containing everything required by section 32(2) are furnished to the registrar by the applicant.
If the documents are furnished on different days, the date of filing is the last of those days.
(2) References in this Act to the date of application for registration are to the date of filing of the application.
(1) Goods and services shall be classified for the purposes of the registration of trade marks according to a prescribed system of classification.
(2) Any question arising as to the class within which any goods or services fall shall be determined by the registrar, whose decision shall be final.
(1) A person who has duly filed an application for protection of a trade mark in a Convention country (a “Convention application”), or his successor in title, has a right to priority, for the purposes of registering the same trade mark under this Act for some or all of the same goods or services, for a period of six months from the date of filing of the first such application.
(2) If the application for registration under this Act is made within that six-month period—
(a) the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first Convention application, and
(b) the registrability of the trade mark shall not be affected by any use of the mark in the United Kingdom in the period between that date and the date of the application under this Act.
(3) Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority.
A “regular national filing” means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent fate of the application.
(4) A subsequent application concerning the same subject as the first Convention application, filed in the same Convention country, shall be considered the first Convention application (of which the filing date is the starting date of the period of priority), if at the time of the subsequent application—
(a) the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding, and
(b) it has not yet served as a basis for claiming a right of priority.
The previous application may not thereafter serve as a basis for claiming a right of priority.
(5) Provision may be made by rules as to the manner of claiming a right to priority on the basis of a Convention application.
(6) A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either with the application or independently.
The reference in subsection (1) to the applicant’s “successor in title” shall be construed accordingly.
36 Claim to priority from other relevant overseas application.
(1) Her Majesty may by Order in Council make provision for conferring on a person who has duly filed an application for protection of a trade mark in—
(a) any of the Channel Islands or a colony, or
(b) a country or territory in relation to which Her Majesty’s Government in the United Kingdom have entered into a treaty, convention, arrangement or engagement for the reciprocal protection of trade marks,
a right to priority, for the purpose of registering the same trade mark under this Act for some or all of the same goods or services, for a specified period from the date of filing of that application.
(2) An Order in Council under this section may make provision corresponding to that made by section 35 in relation to Convention countries or such other provision as appears to Her Majesty to be appropriate.
(3) A statutory instrument containing an Order in Council under this section shall be subject to annulment in pursuance of a resolution of either House of Parliament.
(1) The registrar shall examine whether an application for registration of a trade mark satisfies the requirements of this Act (including any requirements imposed by rules).
(2) For that purpose he shall carry out a search, to such extent as he considers necessary, of earlier trade marks.
(3) If it appears to the registrar that the requirements for registration are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to amend the application.
(4) If the applicant fails to satisfy the registrar that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse to accept the application.
(5) If it appears to the registrar that the requirements for registration are met, he shall accept the application.
38 Publication, opposition proceedings and observations.
(1) When an application for registration has been accepted, the registrar shall cause the application to be published in the prescribed manner.
(2) Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration.
The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.
(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.
(3) Where an application has been published, any person may, at any time before the registration of the trade mark, make observations in writing to the registrar as to whether the trade mark should be registered; and the registrar shall inform the applicant of any such observations.
A person who makes observations does not thereby become a party to the proceedings on the application.
39 Withdrawal, restriction or amendment of application.
(1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application.
If the application has been published, the withdrawal or restriction shall also be published.
(2) In other respects, an application may be amended, at the request of the applicant, only by correcting—
(a) the name or address of the applicant,
(b) errors of wording or of copying, or
(c) obvious mistakes,
and then only where the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application.
(3) Provision shall be made by rules for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application, and for the making of objections by any person claiming to be affected by it.
(1) Where an application has been accepted and—
(a) no notice of opposition is given within the period referred to in section 38(2), or
(b) all opposition proceedings are withdrawn or decided in favour of the applicant,
the registrar shall register the trade mark, unless it appears to him having regard to matters coming to his notice since the application was accepted that the registration requirements (other than those mentioned in section 5(1), (2) or (3)) were not met at that time.
(2) A trade mark shall not be registered unless any fee prescribed for the registration is paid within the prescribed period.
If the fee is not paid within that period, the application shall be deemed to be withdrawn.
(3) A trade mark when registered shall be registered as of the date of filing of the application for registration; and that date shall be deemed for the purposes of this Act to be the date of registration.
(4) On the registration of a trade mark the registrar shall publish the registration in the prescribed manner and issue to the applicant a certificate of registration.
(1) Provision may be made by rules as to—
(a) the division of an application for the registration of a trade mark into several applications;
(aa) the division of a registration of a trade mark into several registrations;
(b) the merging of separate applications or registrations;
(c) the registration of a series of trade marks.
(2) A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.
(3) Rules under this section may include provision as to—
(a) the circumstances in which, and conditions subject to which, division, merger or registration of a series is permitted, and
(b) the purposes for which an application or registration to which the rules apply is to be treated as a single application or registration and those for which it is to be treated as a number of separate applications or registrations.
(1) A trade mark shall be registered for a period of ten years from the date of registration.
(2) Registration may be renewed in accordance with section 43 for further periods of ten years.
(1) The registration of a trade mark may be renewed at the request of the proprietor, subject to payment of a renewal fee.
(2) Provision shall be made by rules for the registrar to inform the proprietor of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.
(3) A request for renewal must be made, and the renewal fee paid, before the expiry of the registration.
Failing this, the request may be made and the fee paid within such further period (of not less than six months) as may be prescribed, in which case an additional renewal fee must also be paid within that period.
(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.
(4) Renewal shall take effect from the expiry of the previous registration.
(5) If the registration is not renewed in accordance with the above provisions, the registrar shall remove the trade mark from the register.
Provision may be made by rules for the restoration of the registration of a trade mark which has been removed from the register, subject to such conditions (if any) as may be prescribed.
(6) The renewal or restoration of the registration of a trade mark shall be published in the prescribed manner.
(1) A registered trade mark shall not be altered in the register, during the period of registration or on renewal.
(2) Nevertheless, the registrar may, at the request of the proprietor, allow the alteration of a registered trade mark where the mark includes the proprietor’s name or address and the alteration is limited to alteration of that name or address and does not substantially affect the identity of the mark.
(3) Provision shall be made by rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.
(1) A registered trade mark may be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered.
(2) Provision may be made by rules—
(a) as to the manner and effect of a surrender, and
(b) for protecting the interests of other persons having a right in the registered trade mark.
(1) The registration of a trade mark may be revoked on any of the following grounds—
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;
(d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
(2) For the purposes of subsection (1) use of a trade mark includes use in a form (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 use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes.
(3) The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1)(a) or (b) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made:
Provided that, any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.
(4) An application for revocation may be made by any person, and may be made either to the registrar or to the court, except that—
(a) if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and
(b) if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court.
(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.
(6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from—
(a) the date of the application for revocation, or
(b) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date.
(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).
Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
(2) Subject to subsections (2A) and (2G), the registration of a trade mark may be declared invalid on the ground—
(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or
(b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,
unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.
(2ZA) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 5(6).
(2A) ... The registration of a trade mark may not be declared invalid on the ground that there is an earlier trade mark unless—
(a) the registration procedure for the earlier trade mark was completed within the period of five years ending with the date of the application for the declaration,
(b) the registration procedure for the earlier trade mark was not completed before that date, or
(c) the use conditions are met.
(2B) The use conditions are met if—
(a) the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with their consent in relation to the goods or services for which it is registered—
(i) within the period of 5 years ending with the date of application for the declaration, and
(ii) within the period of 5 years ending with the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application where, at that date, the five year period within which the earlier trade mark should have been put to genuine use as provided in section 46(1)(a) has expired, or
(b) it has not been so used, but there are proper reasons for non-use.
(2C) 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.
(2D) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(2DA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(2E) 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.
(2F) Subsection (2A) does not apply where the earlier trade mark is a trade mark within section 6(1)(c).
(2G) An application for a declaration of invalidity on the basis of an earlier trade mark must be refused if it would have been refused, for any of the reasons set out in subsection (2H), had the application for the declaration been made on the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application.
(2H) The reasons referred to in subsection (2G) are—
(a) that on the date in question the earlier trade mark was liable to be declared invalid by virtue of section 3(1)(b), (c) or (d), (and had not yet acquired a distinctive character as mentioned in the words after paragraph (d) in section 3(1));
(b) that the application for a declaration of invalidity is based on section 5(2) and the earlier trade mark had not yet become sufficiently distinctive to support a finding of likelihood of confusion within the meaning of section 5(2);
(c) that the application for a declaration of invalidity is based on section 5(3)(a) and the earlier trade mark had not yet acquired a reputation within the meaning of section 5(3).
(3) An application for a declaration of invalidity may be made by any person, and may be made either to the registrar or to the court, except that—
(a) if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and
(b) if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court.
(4) In the case of bad faith in the registration of a trade mark, the registrar himself may apply to the court for a declaration of the invalidity of the registration.
(5) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.
(5A) An application for a declaration of invalidity may be filed on the basis of one or more earlier trade marks or other earlier rights provided they all belong to the same proprietor.
(6) Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made:
Provided that this shall not affect transactions past and closed.
(1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the United Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right—
(a) to apply for a declaration that the registration of the later trade mark is invalid, or
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used,
unless the registration of the later trade mark was applied for in bad faith.
(2) Where subsection (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against his later trade mark.
(1) A collective mark is a mark 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.
(2) The provisions of this Act apply to collective marks subject to the provisions of Schedule 1.
(1) A certification mark is a mark which is described as such when the mark is applied for and indicates that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
(2) The provisions of this Act apply to certification marks subject to the provisions of Schedule 2.
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 IP completion day).
52A Certain trade marks registered as European Union trade marks to be treated as registered trade marks
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 IP completion day and about certain applications for a European Union trade mark made before IP completion day.
In this Act—
“the Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27th June 1989;
“the International Bureau” has the meaning given by Article 2(1) of that Protocol; and
...
“international trade mark (UK)” means a trade mark which is entitled to protection in the United Kingdom under that Protocol.
54 Power to make provision giving effect to Madrid Protocol.
(1) The Secretary of State may by order make such provision as he thinks fit for giving effect in the United Kingdom to the provisions of the Madrid Protocol.
(2) Provision may, in particular, be made with respect to—
(a) the making of applications for international registrations by way of the Patent Office as office of origin;
(b) the procedures to be followed where the basic United Kingdom application or registration fails or ceases to be in force;
(c) the procedures to be followed where the Patent Office receives from the International Bureau a request for extension of protection to the United Kingdom;
(d) the effects of a successful request for extension of protection to the United Kingdom;
(e) the transformation of an application for an international registration, or an international registration, into a national application for registration;
(f) the communication of information to the International Bureau;
(g) the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals.
(3) Without prejudice to the generality of subsection (1), provision may be made by regulations under this section applying in relation to an international trade mark (UK) the provisions of—
(a) sections 21 to 21F (unjustified threats);
(b) sections 89 to 91 (importation of infringing goods, material or articles); and
(c) sections 92, 93, 95 and 96 (offences).
(4) An order under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.
54A Certain international trade marks protected in the European Union to be treated as registered trade marks
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 IP completion day and about certain applications for the protection of an international trade mark in the European Union and transformation applications made before IP completion day.
(1) In this Act—
(a) “the Paris Convention” means the Paris Convention for the Protection of Industrial Property of March 20th 1883, as revised or amended from time to time, . . .
(aa) “the WTO agreement” means the Agreement establishing the World Trade Organisation signed at Marrakesh on 15th April 1994 , and
(b) a “Convention country” means a country, other than the United Kingdom, which is a party to that Convention or to that Agreement.
(2) The Secretary of State may by order make such amendments of this Act, and rules made under this Act, as appear to him appropriate in consequence of any revision or amendment of the Paris Convention or the WTO agreement after the passing of this Act.
(3) Any such order shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.
56 Protection of well-known trade marks: Article 6bis.
(1) References in this Act to a trade mark which is entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark are to a mark which is well-known in the United Kingdom as being the mark of a person who—
(a) is a national of the United Kingdom or a Convention country, or
(b) is domiciled in, or has a real and effective industrial or commercial establishment in, the United Kingdom or a Convention country,
whether or not that person carries on business, or has any goodwill, in the United Kingdom.
References to the proprietor of such a mark shall be construed accordingly.
(2) The proprietor of a trade mark which is entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark is entitled to restrain by injunction the use in the United Kingdom of a trade mark which, or the essential part of which, is identical or similar to the well known trade mark—
(a) in relation to identical or similar goods or services, where the use is likely to cause confusion, or
(b) where the well known trade mark has a reputation in the United Kingdom and the use of the other trade mark—
(i) is without due cause, and
(ii) takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the well known trade mark.
This right is subject to section 48 (effect of acquiescence by proprietor of earlier trade mark).
(2A) Subsection (2)(b) applies irrespective of whether the goods or services in relation to which the other trade mark is used are identical with, similar to or not similar to those for which the well known trade mark is entitled to protection.
(3) Nothing in subsection (2) affects the continuation of anybona fide use of a trade mark begun before the commencement of this section.
57 National emblems, &c. of Convention countries: Article 6ter.
(1) A trade mark which consists of or contains the flag of a Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the registrar that use of the flag in the manner proposed is permitted without such authorisation.
(2) A trade mark which consists of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention or the WTO agreement shall not be registered without the authorisation of the competent authorities of that country.
(3) A trade mark which consists of or contains an official sign or hallmark adopted by a Convention country and indicating control and warranty shall not, where the sign or hallmark is protected under the Paris Convention or the WTO agreement, be registered in relation to goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of the country concerned.
(4) The provisions of this section as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.
(5) Nothing in this section prevents the registration of a trade mark on the application of a national of a country who is authorised to make use of a state emblem, or official sign or hallmark, of that country, notwithstanding that it is similar to that of another country.
(6) Where by virtue of this section the authorisation of the competent authorities of a Convention country is or would be required for the registration of a trade mark, those authorities are entitled to restrain by injunction any use of the mark in the United Kingdom without their authorisation.
58 Emblems, &c. of certain international organisations: Article 6ter.
(1) This section applies to—
(a) the armorial bearings, flags or other emblems, and
(b) the abbreviations and names,
of international intergovernmental organisations of which one or more Convention countries are members.
(2) A trade mark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris Convention or the WTO agreementshall not be registered without the authorisation of the international organisation concerned, unless it appears to the registrar that the use of the emblem, abbreviation or name in the manner proposed—
(a) is not such as to suggest to the public that a connection exists between the organisation and the trade mark, or
(b) is not likely to mislead the public as to the existence of a connection between the user and the organisation.
(3) The provisions of this section as to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem.
(4) Where by virtue of this section the authorisation of an international organisation is or would be required for the registration of a trade mark, that organisation is entitled to restrain by injunction any use of the mark in the United Kingdom without its authorisation.
(5) Nothing in this section affects the rights of a person whosebona fide use of the trade mark in question began before 4th January 1962 (when the relevant provisions of the Paris Convention entered into force in relation to the United Kingdom).
59 Notification under Article 6ter of the Convention.
(1) For the purposes of section 57 state emblems of a Convention country (other than the national flag), and official signs or hallmarks, shall be regarded as protected under the Paris Convention only if, or to the extent that—
(a) the country in question has notified the United Kingdom in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, sign or hallmark,
(b) the notification remains in force, and
(c) the United Kingdom has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn.
(2) For the purposes of section 58 the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention only if, or to the extent that—
(a) the organisation in question has notified the United Kingdom in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, abbreviation or name,
(b) the notification remains in force, and
(c) the United Kingdom has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn.
(3) Notification under Article 6ter(3) of the Paris Convention shall have effect only in relation to applications for registration made more than two months after the receipt of the notification.
(4) The registrar shall keep and make available for public inspection by any person, at all reasonable hours and free of charge, a list of—
(a) the state emblems and official signs or hallmarks, and
(b) the emblems, abbreviations and names of international organisations,
which are for the time being protected under the Paris Convention by virtue of notification under Article 6ter(3).
(5) Any reference in this section to Article 6ter of the Paris Convention shall be construed as including a reference to that Article as applied by the WTO agreement
(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.
(1) The registrar shall maintain a register of trade marks.
References in this Act to “the register” are to that register; and references to registration (in particular, in the expression “registered trade mark”) are, unless the context otherwise requires, to registration in that register.
(2) There shall be entered in the register in accordance with this Act—
(a) registered trade marks,
(b) such particulars as may be prescribed of registrable transactions affecting a registered trade mark, and
(c) such other matters relating to registered trade marks as may be prescribed.
(3) The register shall be kept in such manner as may be prescribed, and provision shall in particular be made for—
(a) public inspection of the register, and
(b) the supply of certified or uncertified copies, or extracts, of entries in the register.
(1) Any person having a sufficient interest may apply for the rectification of an error or omission in the register:
Provided that an application for rectification may not be made in respect of a matter affecting the validity of the registration of a trade mark.
(2) An application for rectification may be made either to the registrar or to the court, except that—
(a) if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and
(b) if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court.
(3) Except where the registrar or the court directs otherwise, the effect of rectification of the register is that the error or omission in question shall be deemed never to have been made.
(4) The registrar may, on request made in the prescribed manner by the proprietor of a registered trade mark, or a licensee, enter any change in his name or address as recorded in the register.
(5) The registrar may remove from the register matter appearing to him to have ceased to have effect.
(1) Provision may be made by rules empowering the registrar to do such things as he considers necessary to implement any amended or substituted classification of goods or services for the purposes of the registration of trade marks.
(2) Provision may in particular be made for the amendment of existing entries on the register so as to accord with the new classification.
(3) Any such power of amendment shall not be exercised so as to extend the rights conferred by the registration, except where it appears to the registrar that compliance with this requirement would involve undue complexity and that any extension would not be substantial and would not adversely affect the rights of any person.
(4) The rules may empower the registrar—
(a) to require the proprietor of a registered trade mark, within such time as may be prescribed, to file a proposal for amendment of the register, and
(b) to cancel or refuse to renew the registration of the trade mark in the event of his failing to do so.
(5) Any such proposal shall be advertised, and may be opposed, in such manner as may be prescribed.