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Trade Marks Act 1994 (c. 26)

(The document as of February, 2008)

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Trade Marks Act 1994

1994 CHAPTER 26

ARRANGEMENT OF SECTIONS

Content
  1. Part I

    Registered trade marks

    1. Introductory

      1. 1. Trade marks.

      2. 2. Registered trade marks.

    2. Grounds for refusal of registration

      1. 3. Absolute grounds for refusal of registration.

      2. 4. Specially protected emblems.

      3. 5. Relative grounds for refusal of registration.

      4. 6. Meaning of "earlier trade mark".

      5. 7. Raising of relative grounds in case of honest concurrent use.

      6. 8. Power to require that relative grounds be raised in opposition proceedings.

    3. Effects of registered trade mark

      1. 9. Rights conferred by registered trade mark.

      2. 10. Infringement of registered trade mark.

      3. 11. Limits on effect of registered trade mark.

      4. 12. Exhaustion of rights conferred by registered trade mark.

      5. 13. Registration subject to disclaimer or limitation.

    4. Infringement proceedings

      1. 14. Action for infringement.

      2. 15. Order for erasure, &c. of offending sign.

      3. 16. Order for delivery up of infringing goods, material or articles.

      4. 17. Meaning of "infringing goods, material or articles".

      5. 18. Period after which remedy of delivery up not available.

      6. 19. Order as to disposal of infringing goods, material or articles.

      7. 20. Jurisdiction of sheriff court or county court in Northern Ireland.

      8. 21. Remedy for groundless threats of infringement proceedings.

    5. Registered trade mark as object of property

      1. 22. Nature of registered trade mark.

      2. 23. Co-ownership of registered trade mark.

      3. 24. Assignment, &c. of registered trade mark.

      4. 25. Registration of transactions affecting registered trade mark.

      5. 26. Trusts and equities.

      6. 27. Application for registration of trade mark as an object of property.

    6. Licensing

      1. 28. Licensing of registered trade mark.

      2. 29. Exclusive licences.

      3. 39. Withdrawal, restriction or amendment of application.

      4. 40. Registration.

      5. 41. Registration: supplementary provisions.

    7. Duration, renewal and alteration of registered trade mark

      1. 42. Duration of registration.

      2. 43. Renewal of registration.

      3. 44. Alteration of registered trade mark.

    8. Surrender, revocation and invalidity

      1. 45. Surrender of registered trade mark.

      2. 46. Revocation of registration.

      3. 47. Grounds for invalidity of registration.

      4. 48. Effect of acquiescence.

    9. Collective marks

      1. 49. Collective marks.

    10. Certification marks

      1. 50. Certification marks.

  2. Part II

    Community trade marks and international matters

    1. Community trade marks

      1. 51. Meaning of "Community trade mark".

      2. 52. Power to make provision in connection with Community Trade Mark Regulation.

    2. The Madrid Protocol: international registration

      1. 53. The Madrid Protocol.

      2. 54. Power to make provision giving effect to Madrid Protocol.

    3. The Paris Convention: supplementary provisions

      1. 55. The Paris Convention.

      2. 56. Protection of well-known trade marks: Article 6bis.

      3. 57. National emblems, &c. of Convention countries: Article 6ter.

      4. 58. Emblems, &c. of certain international organisations: Article 6ter.

      5. 59. Notification under Article 6ter of the Convention.

      6. 60. Acts of agent or representative: Article 6septies.

    4. Miscellaneous

      1. 61. Stamp duty.

  3. Part III

    Administrative and other supplementary provisions

    1. The registrar

      1. 62. The registrar.

    2. The register

      1. 63. The register.

      2. 64. Rectification or correction of the register.

      3. 65. Adaptation of entries to new classification.

    3. Powers and duties of the registrar

      1. 66. Power to require use of forms.

      2. 67. Information about applications and registered trade marks.

      3. 68. Costs and security for costs.

      4. 69. Evidence before registrar.

      5. 70. Exclusion of liability in respect of official acts.

      6. 71. Registrar's annual report.

    4. Legal proceedings and appeals

      1. 72. Registration to be prima facie evidence of validity.

      2. 73. Certificate of validity of contested registration.

      3. 74. Registrar's appearance in proceedings involving the register.

      4. 75. The court.

      5. 76. Appeals from the registrar.

      6. 77. Persons appointed to hear and determine appeals.

    5. Rules, fees, hours of business, &c.

      1. 78. Power of Secretary of State to make rules.

      2. 79. Fees.

      3. 80. Hours of business and business days.

      4. 81. The trade marks journal.

    6. Trade mark agents, &c.

      1. 82. Recognition of agents.

      2. 83. The register of trade mark agents.

      3. 84. Unregistered persons not to be described as registered trade mark agents.

      4. 85. Power to prescribe conditions, &c. for mixed partnerships and bodies corporate.

      5. 86. Use of the term "trade mark attorney".

      6. 87. Privilege for communications with registered trade mark agents.

      7. 88. Power of registrar to refuse to deal with certain agents.

    7. Importation of infringing goods, material or articles

      1. 89. Infringing goods, material or articles may be treated as prohibited goods.

      2. 90. Power of Commissioners of Customs and Excise to make regulations.

      3. 91. Po

  4. Part IV

    Miscellaneous and general provisions

    1. Miscellaneous

      1. 99. Unauthorised use of Royal arms, &c.

      2. 100. Burden of proving use of trade mark.

      3. 101. Offences committed by partnerships and bodies corporate.

    2. Interpretation

      1. 102. Adaptation of expressions for Scotland.

      2. 103. Minor definitions.

      3. 104. Index of defined expressions.

    3. Other general provisions

      1. 105. Transitional provisions.

      2. 106. Consequential amendments and repeals.

      3. 107. Territorial waters and the continental shelf.

      4. 108. Extent.

      5. 109. Commencement.

      6. 110. Short title.

    1. Schedule 1 Collective marks

    2. Schedule 2

      Certification marks.

    3. Schedule 3

      Transitional provisions.

    4. Schedule 4

      Consequential amendments.

    5. Schedule 5

      Repeals and revocations.

An Act to make new provision for registered trade marks, implementing Council Directive No. 89/104/EEC of 21st December 1988 to approximate the laws of the Member States relating to trade marks; to make provision in connection with Council Regulation (EC) No. 40/94 of 20th December 1993 on the Community trade mark; to give effect to the Madrid Protocol Relating to the International Registration of Marks of 27th June 1989, and to certain provisions of the Paris Convention for the Protection of Industrial Property of 20th March 1883, as revised and amended; and for connected purposes.

[21st July 1994]

Be it enacted by the Queen's most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:--



Part I Registered trade marks

Introductory

1 Trade marks

(1) In this Act a "trade mark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

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

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

2 Registered trade marks

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

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



Grounds for refusal of registration

3 Absolute grounds for refusal of registration

(1) The following shall not be registered--

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

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

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

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

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

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

(a) the shape which results from the nature of the goods themselves,

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

(c) the shape which gives substantial value to the goods.

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

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

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

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

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

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

4 Specially protected emblems

(1) A trade mark which consists of or contains--

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

5 Relative grounds for refusal of registration

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

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

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

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

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

(3) A trade mark which--

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

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,

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

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

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, or

(b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) above, in particular by virtue of the law of copyright, design right or registered designs.

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

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

6 Meaning of "earlier trade mark"

(1) In this Act an "earlier trade mark" means--

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

(b) a Community trade mark which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK), or

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

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

(3) A trade mark within subsection (1)(a) or (b) whose registration expires shall continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry unless the registrar is satisfied that there was no bona fide use of the mark during the two years immediately preceding the expiry.

7 Raising of relative grounds in case of honest concurrent use

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

(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or

(b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,

but the applicant shows to the satisfaction of the registrar that there has been honest concurrent use of the trade mark for which registration is sought.

(2) In that case the registrar shall not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.

(3) For the purposes of this section "honest concurrent use" means such use in the United Kingdom, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of section 12(2) of the [1938 c. 22.] Trade Marks Act 1938.

(4) Nothing in this section affects--

(a) the refusal of registration on the grounds mentioned in section 3 (absolute grounds for refusal), or

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

(5) This section does not apply when there is an order in force under section 8 below.

8 Power to require that relative grounds be raised in opposition proceedings

(1) The Secretary of State may by order provide that in any case a trade mark shall not be refused registration on a ground mentioned in section 5 (relative grounds for refusal) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark or other earlier right.

(2) The order may make such consequential provision as appears to the Secretary of State appropriate--

(a) with respect to the carrying out by the registrar of searches of earlier trade marks, and

(b) as to the persons by whom an application for a declaration of invalidity may be made on the grounds specified in section 47(2) (relative grounds).

(3) An order making such provision as is mentioned in subsection (2)(a) may direct that so much of section 37 (examination of application) as requires a search to be carried out shall cease to have effect.

(4) An order making such provision as is mentioned in subsection (2)(b) may provide that so much of section 47(3) as provides that any person may make an application for a declaration of invalidity shall have effect subject to the provisions of the order.

(5) An order under this section shall be made by statutory instrument, and no order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.

No such draft of an order making such provision as is mentioned in subsection (1) shall be laid before Parliament until after the end of the period of ten years beginning with the day on which applications for Community trade marks may first be filed in pursuance of the Community Trade Mark Regulation.

(6) An order under this section may contain such transitional provisions as appear to the Secretary of State to be appropriate.



Effects of registered trade mark

9 Rights conferred by registered trade mark

(1) The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.

The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10.

(2) References in this Act to the infringement of a registered trade mark are to any such infringement of the rights of the proprietor.

(3) The rights of the proprietor have effect from the date of registration (which in accordance with section 40(3) is the date of filing of the application for registration):

Provided that--

(a) no infringement proceedings may be begun before the date on which the trade mark is in fact registered; and

(b) no offence under section 92 (unauthorised use of trade mark, &c. in relation to goods) is committed by anything done before the date of publication of the registration.

10 Infringement of registered trade mark

(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because--

(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

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

(3) A person infringes a registered trade mark if he uses in the course of trade a sign which--

(a) is identical with or similar to the trade mark, and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

(4) For the purposes of this section a person uses a sign if, in particular, he--

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;

(c) imports or exports goods under the sign; or

(d) uses the sign on business papers or in advertising.

(5) A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(6) Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee.

But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.

11 Limits on effect of registered trade mark

(1) A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)).

(2) A registered trade mark is not infringed by--

(a) the use by a person of his own name or address,

(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or

(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),

provided the use is in accordance with honest practices in industrial or commercial matters.

(3) A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality.

For this purpose an "earlier right" means an unregistered trade mark or other sign continuously used in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of--

(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or

(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his;

and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off).

12 Exhaustion of rights conferred by registered trade mark

(1) A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.

(2) Subsection (1) does not apply where there exist legitimate reasons for the proprietor to oppose further dealings in the goods (in particular, where the condition of the goods has been changed or impaired after they have been put on the market).

13 Registration subject to disclaimer or limitation

(1) An applicant for registration of a trade mark, or the proprietor of a registered trade mark, may--

(a) disclaim any right to the exclusive use of any specified element of the trade mark, or

(b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation;

and where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 9 (rights conferred by registered trade mark) are restricted accordingly.

(2) Provision shall be made by rules as to the publication and entry in the register of a disclaimer or limitation.



Infringement proceedings

14 Action for infringement

(1) An infringement of a registered trade mark is actionable by the proprietor of the trade mark.

(2) In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise is available to him as is available in respect of the infringement of any other property right.

15 Order for erasure, &c. of offending sign

(1) Where a person is found to have infringed a registered trade mark, the court may make an order requiring him--

(a) to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control, or

(b) if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction of the infringing goods, material or articles in question.

(2) If an order under subsection (1) is not complied with, or it appears to the court likely that such an order would not be complied with, the court may order that the infringing goods, material or articles be delivered to such person as the court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be.

16 Order for delivery up of infringing goods, material or articles

(1) The proprietor of a registered trade mark may apply to the court for an order for the delivery up to him, or such other person as the court may direct, of any infringing goods, material or articles which a person has in his possession, custody or control in the course of a business.

(2) An application shall not be made after the end of the period specified in section 18 (period after which remedy of delivery up not available); and no order shall be made unless the court also makes, or it appears to the court that there are grounds for making, an order under section 19 (order as to disposal of infringing goods, &c.).

(3) A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this section shall, if an order under section 19 is not made, retain them pending the making of an order, or the decision not to make an order, under that section.

(4) Nothing in this section affects any other power of the court.

17 Meaning of "infringing goods, material or articles"

(1) In this Act the expressions "infringing goods", "infringing material" and "infringing articles" shall be construed as follows.

(2) Goods are "infringing goods", in relation to a registered trade mark, if they or their packaging bear a sign identical or similar to that mark and--

(a) the application of the sign to the goods or their packaging was an infringement of the registered trade mark, or

(b) the goods are proposed to be imported into the United Kingdom and the application of the sign in the United Kingdom to them or their packaging would be an infringement of the registered trade mark, or

(c) the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trade mark.

(3) Nothing in subsection (2) shall be construed as affecting the importation of goods which may lawfully be imported into the United Kingdom by virtue of an enforceable Community right.

(4) Material is "infringing material", in relation to a registered trade mark if it bears a sign identical or similar to that mark and either--

(a) it is used for labelling or packaging goods, as a business paper, or for advertising goods or services, in such a way as to infringe the registered trade mark, or

(b) it is intended to be so used and such use would infringe the registered trade mark.

(5) "Infringing articles", in relation to a registered trade mark, means articles--

(a) which are specifically designed or adapted for making copies of a sign identical or similar to that mark, and

(b) which a person has in his possession, custody or control, knowing or having reason to believe that they have been or are to be used to produce infringing goods or material.

18 Period after which remedy of delivery up not available

(1) An application for an order under section 16 (order for delivery up of infringing goods, material or articles) may not be made after the end of the period of six years from--

(a) in the case of infringing goods, the date on which the trade mark was applied to the goods or their packaging,

(b) in the case of infringing material, the date on which the trade mark was applied to the material, or

(c) in the case of infringing articles, the date on which they were made,

except as mentioned in the following provisions.

(2) If during the whole or part of that period the proprietor of the registered trade mark--

(a) is under a disability, or

(b) is prevented by fraud or concealment from discovering the facts entitling him to apply for an order,

an application may be made at any time before the end of the period of six years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.

(3) In subsection (2) "disability"--

(a) in England and Wales, has the same meaning as in the [1980 c. 58.] Limitation Act 1980;

(b) in Scotland, means legal disability within the meaning of the [1973 c. 52.] Prescription and Limitation (Scotland) Act 1973;

(c) in Northern Ireland, has the same meaning as in the [S.I. 1989/1339 (N.I. 11).] Limitation (Northern Ireland) Order 1989.

19 Order as to disposal of infringing goods, material or articles

(1) Where infringing goods, material or articles have been delivered up in pursuance of an order under section 16, an application may be made to the court--

(a) for an order that they be destroyed or forfeited to such person as the court may think fit, or

(b) for a decision that no such order should be made.

(2) In considering what order (if any) should be made, the court shall consider whether other remedies available in an action for infringement of the registered trade mark would be adequate to compensate the proprietor and any licensee and protect their interests.

(3) Provision shall be made by rules of court as to the service of notice on persons having an interest in the goods, material or articles, 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.

(4) Where there is more than one person interested in the goods, material or articles, the court shall make such order as it thinks just.

(5) If the court decides that no order should be made under this section, the person in whose possession, custody or control the goods, material or articles were before being delivered up is entitled to their return.

(6) References in this section to a person having an interest in goods, material or articles include any person in whose favour an order could be made under this section or under section 114, 204 or 231 of the [1988 c. 48.] Copyright, Designs and Patents Act 1988 (which make similar provision in relation to infringement of copyright, rights in performances and design right).

20 Jurisdiction of sheriff court or county court in Northern Ireland

Proceedings for an order under section 16 (order for delivery up of infringing goods, material or articles) or section 19 (order as to disposal of infringing goods, &c.) may be brought--

(a) in the sheriff court in Scotland, or

(b) in a county court in Northern Ireland.

This does not affect the jurisdiction of the Court of Session or the High Court in Northern Ireland.

21 Remedy for groundless threats of infringement proceedings

(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than--

(a) the application of the mark to goods or their packaging,

(b) the importation of goods to which, or to the packaging of which, the mark has been applied, or

(c) the supply of services under the mark,

any person aggrieved may bring proceedings for relief under this section.

(2) The relief which may be applied for is any of the following--

(a) a declaration that the threats are unjustifiable,

(b) an injunction against the continuance of the threats,

(c) damages in respect of any loss he has sustained by the threats;

and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.

(3) If that is shown by the defendant, the plaintiff is nevertheless entitled to relief if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.

(4) The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section.



Registered trade mark as object of property

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22 Nature of registered trade mark

A registered trade mark is personal property (in Scotland, incorporeal moveable property).

23 Co-ownership of registered trade mark

(1) Where a registered trade mark is granted to two or more persons jointly, each of them is entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trade mark.

(2) The following provisions apply where two or more persons are co-proprietors of a registered trade mark, by virtue of subsection (1) or otherwise.

(3) Subject to any agreement to the contrary, each co-proprietor is entitled, by himself or his agents, to do for his own benefit and without the consent of or the need to account to the other or others, any act which would otherwise amount to an infringement of the registered trade mark.

(4) One co-proprietor may not without the consent of the other or others--

(a) grant a licence to use the registered trade mark, or

Pages: P.1 | P.2 | P.3 | P.4 | P.5 | P.6

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