Part 1: Registered Trademark
Preface
1. Trademark
2. Reasons for refusal to register a registered trademark
3. Absolute reasons for refusing registration
4. Special protection mark
5. Relative reasons for refusal of registration
6. The meaning of “prior trademark”
7. Relative reasons given in honest concurrent use situations
8. The power to request counterarguments in opposition proceedings and the effectiveness of registered trademarks
9. Rights obtained through registered trademarks
10. Infringement of registered trademark
11. Limitations on the validity of registered trademarks
12. Exhaustion of the rights conferred by a registered trademark
13. Registered infringement action subject to waiver or limitation
14. Infringement litigation
15. Order to erase infringing marks
16. Order to hand over infringing goods, materials or articles
17. The meaning of infringing goods, materials or articles
18. Statute of limitation for non-availability of transfer relief
19. Order regarding the disposal of infringing goods, materials or articles
20. Justice at the County Court or Northern Ireland County Court
21. Remedies against unfounded threats of infringement proceedings Registered trademarks as property objects
22. Characteristics of registered trademarks
23. The number of registered trademarks is
24. Transfer of registered trademarks, etc.
25. Registration of transactions affecting registered trademarks
26. Trusts and Equity
27. Application for permission to register a trademark as a property object
28. License to register trademark
29. Exclusive license
30. General principles of licensee’s rights in case of infringement
31. Application for registered trademark of exclusive licensee with transferee rights and remedies
32. Registration application
33. Application date
34. Classification priority of trademarks
35. Declaration of application of Paris Convention priority
36. Procedure for requesting priority registration from other relevant overseas applications
37. Review of Application
38. Announcements, objection procedures and opinions
39. Withdraw, restrict or amend an application
40. Register
41. Registration: Supplementary provisions on the validity period, renewal and change of registered trademarks
42. Registration period
43. Renewal of registration
44. Change, abandonment, cancellation and invalidation of registered trademarks
45. Abandonment of registered trademarks
46. Cancellation of registration
47. Reasons for invalid registration
48. Collective mark with tacit validity
49. Collective mark and certification mark
50. Certification Marks
Part Two European General Trademarks and International Affairs
European General Trademarks
51. The meaning of "European General Trademark"
52. Power to formulate provisions related to the European Trademark Regulations Madrid Protocol: International Registration
53. Madrid Protocol
54. Paris Convention on Provisional Powers for the Entry into Force of the Madrid Protocol: Annex
55. Paris Convention
56． Protection of well-known trademarks: Article 6-2
57. National emblems of Paris Convention member states, etc.: Article 6ter
58. Coat of arms of an international organization, etc.: Article 6ter
59. Notification under Article 6ter of the Paris Convention
60. Agent or representative law: Article 6ter7
Miscellaneous
61. Stamp duty
The third part of the line
Administration and other supplementary provisions
Registrar
62. Registrar
Register
63. Register
64. Correction or correction of the register
65. Rewriting an entry into a new classification
Powers and obligations of the Registrar
66. Request for use 67. Information on trademark application and registration
68. Fees and mortgage fees
69. Provide evidence to the Registrar
70. Exemption from liability for official acts
71. Annual report of the Registrar
Legal proceedings and appeals
72. Preliminary evidence of validity Registration
73. Certificate of validity of disputed registration
74. Appearance of the Registrar in proceedings involving trademarks
75. Court
76. Appeal from the Registrar
77. Person designated to hear and decide the appeal
Rules, fees, business hours, etc.
78. Power of the Secretary of State to make rules
79. Fees
80. Business hours and days
81. Trademark magazine
Trademark agency
82. Recognition of agents
83. Register of trademark agents
84. Unregistered persons cannot be called registered trademark agents
85. Power to prescribe conditions for mixed partnerships and corporate bodies
86. Use of the term "trademark agent"
87. Contact a registered trademark agent 88. The right of the Registrar to refuse dealings with certain agents
Import of infringing goods, materials or articles
89. Infringing goods, materials or the articles may be treated as prohibited goods
90. Power of the Commissioner of Customs to make rules
91. Power of customs and excise officials to disclose information
Illegal acts
92. Unauthorized use of trademarks in connection with goods
93. Implementation functions of local metrological authorities
94. Registration of Fraud, etc.
95. Falsely claiming that a certain mark is a registered trademark
96. Supplementary provisions on summary judgment proceedings in Scotland
Confiscation of counterfeit goods, etc.
97. Confiscation: England and Wales or Northern Ireland
98. Confiscation: Scotland
Part 4 Miscellaneous and General Provisions
Miscellaneous
99. Unauthorized use of royal emblems, etc.
100. Responsibility to prove trademark use
101. Illegal acts of partnerships and corporate bodies
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Explanation
102. Adoption of Scottish expressions
103. Secondary definitions
104. Index of explanation terms
Other general provisions
105, transitional provisions
106, consequent amendments and repeals
107, territorial sea and continental shelf
108, Degree
109, Beginning
110, Short Title
Supplementary Provisions
Supplementary Provision 1
Collective mark
Signs that may be included in a collective mark
Indicia of origin
A mark whose characteristics and importance are not misleading
Collective mark Terms of use management
Articles adopted by the Registrar
Articles for public viewing
Amendments to the Articles
Infringement: Authorized users Rights
Reasons for cancellation of registration
Reasons for invalid registration
Annex 2
Certification marks
General provisions
Logos that may be included in a certification mark
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Geographical indications
The nature of the owner's business
The characteristics or importance of the trademark will not mislead
Certification of the regulations governing the use of trademarks
Approval of the Articles of Association, etc.
Agree to the transfer of the registered certification mark
Infringement: Rights of authorized users
Reasons for cancellation of registration
Annex 3
Transitional Provisions
Introduction
Effects of Registration of Existing Trademarks: Infringement
Infringement Goods, materials and articles
Print and ownership of registered trademarks
Transfer of registered trademarks, etc.
Licensing of registered trademarks
Pending registration applications
Conversion of pending applications
Trademarks registered under the old classification
Claim for priority from overseas applications
Pending application for change of registered trademark
Revocation due to non-use
Application for correction, etc.
Rules regarding the use of certification trademarks
Sheffield Trademarks
Certificate of Validity of the Disputed Registration
Trademark Agents
Schedule 4
General referenced Amend
Patents and Industrial Designs Act 1907 (c29)
Patents, Designs, Copyright and Trade Marks (Emergency) Act 1939 (c.10)
The Trade Descriptions Act of 1968 (c.29)
The Attorneys Act of 1974 (c.47)
The House of Representatives Disqualification Act of 1975 (c.34)
p>Restrictive Business Practices Act of 1976 (c.34)
Copyright, Industrial Designs and Patents Act of 1988 (c.48)
Schedule 5
Cancellation and repeal
Part 1 of registered trademarks
Preface
1. Trademark
(1) In this Act, a trademark refers to any mark that can be represented graphically and that can distinguish the goods or services of one enterprise from those of other enterprises.
A trademark may, inter alia, consist of words (including names), figures, letters, numbers or the shape of goods or packaging of goods.
(2) Unless the context otherwise requires, trademarks referred to in this Law include collective marks (see Article 49) or certification marks (see Article 50).
2. Registered trade mark (1) A registered trade mark is a property right obtained by registration of a trade mark under this Act, and the owner of a registered trade mark has these rights and the remedies provided by this Act.
(2) This law does not provide for procedures for stopping or compensating for unregistered trademark infringement, but this law shall not affect the law on counterfeiting.
Reason for refusal of registration
3. Absolute grounds for refusal of registration
(1) The following trademarks shall not be registered:
(a) Marks that do not meet the requirements of Article 1(1),
(b) A trademark that lacks distinctiveness,
(c) that can only be used in trade to indicate the type, quality, quantity, purpose, value, origin, production time of goods or provision of services, or a mark or description of other characteristics of goods or services.
(d) A trademark consisting solely of a sign or description that has become a bona fide usage and common expression in contemporary language or industry,
If before the date of application for registration, a certain mark or description If a trademark has actually acquired distinctiveness through use, registration shall not be refused based on items (b), (c), and (d) above.
(2) A mark cannot be registered as a trademark if it contains only:
(a) A shape resulting from the nature of the goods themselves,
( b) The shape of the goods necessary to obtain the technical results,
(c) The shape that gives the goods substantial value.
(3) A trademark shall not be registered if it
(a) is inconsistent with public policy or contrary to moral principles, or
( b) Deceptive (such as the nature, quality or origin of the goods or services) (4) If the use of a trademark is prohibited by any statute, regulation, or constitutional law in the United Kingdom, or to such an extent, Then the trademark shall not be registered.
(5) The trademarks stipulated in or involved in Article 4 (Special Protection Marks) shall not be registered.
(6) A trademark application filed in bad faith, or a trademark application made in bad faith shall not be registered.
4． Special protection mark
(1) A trademark if it consists of or contains:
(a) The Royal Army, or any principal coat of arms of the Royal Army, or anything associated with the Royal Army emblems or designs of the military or its coat of arms which are so similar as to be liable to misunderstanding,
(b) the image of a crown or any royal flag,
(c) Her Majesty the Queen or any likeness of any member of the Royal Family, or any specious imitation,
(d) any words, letters or figures likely to lead to the belief that the applicant has or has recently received a royal bounty or authorization,
Registration shall not be granted unless, in the opinion of the Registrar, the above has been agreed to by Her Majesty the Queen or, as the case may be, by or on behalf of the member of the Royal Family concerned.
(2) If a trademark consists of or contains the following designs:
(a) the flag of the United Kingdom, or
(b) England, The flag of Wales, Scotland, Northern Ireland or the Isle of Man,
should not be registered if the use of the mark is, in the opinion of the Registrar, likely to cause confusion or to be seriously offensive.
Provisions may be made under subparagraph (b) regarding flags. (3) Under the circumstances specified in Article 57 (national emblems of countries that are members of the Paris Convention, etc.) or Article 58 (emblems of some international organizations, etc.), trademarks should not be registered.
(4) If a trademark consists of or contains any of the following relevant items, provisions prohibiting the registration of such trademarks may be formulated in accordance with such rules as may be prescribed in these cases.
(a) A coat of arms to which a person is entitled by royal authority, or
(b) A coat of arms sufficiently similar to such a coat of arms to cause confusion
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Unless in the opinion of the Registrar the consent of or on behalf of that person has been obtained.
Nothing in this Act shall be construed as authorizing any use of such a registered mark in conflict with the heraldic laws.
5. Relative grounds for refusal of registration
(1) If a trademark is identical to another earlier trademark, and the goods or services applied for are the same as the goods or services protected by the earlier trademark, the trademark shall not be registered.
(2) A trademark will not be registered if because
(a) it is identical with an earlier trademark and is to be registered in a country where the earlier trademark is protected goods or services that are similar to the goods or services, or
(b) it is similar to an earlier trademark and is to be registered on goods that are identical or similar to the goods or services for which the earlier trademark is protected or services, there is a likelihood of public confusion, including the possibility of association with an earlier trademark.
(3) A trademark
(a) is identical or similar to an earlier trademark, and
(b) is to be registered in a Goods or services that are not similar to the goods or services protected by the trademark shall not be registered. If the earlier trade mark enjoys a reputation in the UK (or a homologous trade mark in the EU) and the unjustified use of the latter trade mark would take unfair advantage of the distinctive character or reputation of the earlier trade mark or or to the extent of adversely affecting that conspicuity or reputation.
(4) A trade mark shall not be registered if its use in the UK is likely to be prohibited, or to the extent of being prohibited, for the following reasons:
(a) In any statute (in particular the law of passing off) protecting unregistered trade marks or other marks in the course of trade, or
(b) other than the rights covered by subsections (1) to (3) or (a) other prior rights, especially rights obtained based on copyright, design rights, or registered designs. In this way, the person who has the right to prohibit the use of a trademark in this law refers to the owner of the "prior rights" related to the trademark. people. (5) Nothing in this section shall prohibit the registration of a trade mark with the consent of the owner of an earlier trade mark or the owner of other prior rights.
6. The meaning of "prior trademark"
(1) In this Law, "prior trademark" means
(a) the date of application for registration is earlier than the application date of the disputed trademark registered trademarks, international trademarks (UK) or homologous trademarks, the priority claimed by these trademarks shall be taken into account (where appropriate);
(b) Based on the earlier registered trademark or international trademark (UK) for a valid claim for an earlier right in a European Union trademark, or
(c) on the filing date of an application for registration of a disputed mark or (where appropriate) on the filing date of an application for registration of a disputed mark The disputed trademark is a trademark that is entitled to the protection of well-known trademarks under the Paris Convention on the priority date requested.
(2) An earlier trade mark referred to in this Act includes a trade mark for which an application for registration has been filed and, if registered, may become a trade mark pursuant to subsection (1)(a) or (b) A previously registered trademark is subject to the condition that it can be so registered.
(3) When deciding whether a subsequent trademark can be registered, the expired trademark in subparagraph (1)(a) or (b) shall still be considered within one year of its expiration. Unless the Registrar is satisfied that the mark has not been genuinely used within two years before the expiry date.
7. Relative grounds for honest simultaneous use
(1) This section shall apply to an application for registration of a trade mark where, in the opinion of the Registrar: (a) there is a conflict with section 5(l) ), an earlier trademark related to the conditions listed in paragraph (2) or (3) or
(b) has an earlier right that meets the relevant conditions in paragraph (4) of Article 5,
However, the applicant must provide evidence to the Registrar's satisfaction that the trademark applied for registration has been used in good faith and at the same time.
(2) In the above circumstances, the Registrar shall not reject the application for the trademark on the basis of an earlier trademark or other earlier rights, unless the owner of the earlier trademark or other earlier rights raises the objection during the opposition procedure. be opposed to.
(3) "Honest concurrent use" as mentioned in this section means such use in the UK by the applicant or another person with his or her consent. as previously stated in Section 12(2) of the Trade Marks Act, 1938 constitutes honest simultaneous use.
(4) Nothing in this section shall affect
(a) the grounds for refusal of registration referred to in section 3 (Absolute grounds for refusal), or
(b) Make an application for a declaration of invalidity in accordance with the provisions of section 47(2) (application for comparative reasons if registration without consent).
(5) This section does not apply when an order is in force under section 8 below.
8. Power to require comparative grounds in opposition proceedings
(1) The Secretary of State may provide by order that in any case a trade mark shall not be used on one of the grounds set out in section 5 (Comparative grounds for refusal). Registration is refused on any of these grounds, unless the owner of the earlier trademark or other earlier right raises an objection based on the above grounds during opposition proceedings.
(2) The order may make it appear appropriate to the Secretary of State that such provisions leading to important results:
(a) In relation to searches of earlier trade marks by the Registrar
p>(b) Regarding an applicant who makes a declaration of invalidity based on the grounds specified in Article 47(2) (relative grounds)
(3) Making a declaration under paragraph (2)( An order under the provisions of subparagraph a) may indicate that many of the provisions requiring inquiries in Article 37 (Examination of Applications) will no longer have effect.
(4) An order making the provisions referred to in subsection (2)(b) may provide for the provisions of section 47(3) on which a person may make an application for a declaration of invalidity. will take effect in accordance with this order.
(5) Orders made under this section shall be made in the form of legal documents. No order may be made unless a draft of the order has been previously drawn up and passed by the House of Commons by resolution.
A draft order laying down provisions as mentioned in sub-section (1) may be filed only after 10 years have elapsed from the date of first filing of an application for registration of a ***homogeneous trade mark under the ***homologous trade mark rules to Parliament.
(6) An order under this section may include such transitional provisions as the Secretary of State seems appropriate.
Effectiveness of registered trademark
9. Rights obtained through registered trademarks
(1) The owner of a registered trademark has the exclusive right to use the infringed trademark in the UK without his consent.
Article 10 provides for infringement without the consent of the registered trademark owner.
(2) Infringement of a registered trademark in this Law refers to any such infringement of the rights of the owner of a registered trademark. (3) The rights of the owner of a registered trademark take effect from the date of registration (which, according to Section 40(3), shall be the date of filing of the application for registration), provided that:
(a) No infringement proceedings may be initiated before the date of actual registration; and
(b) Before the date of registration announcement, no infringement under Article 92 (Unauthorized Trademark Related to Goods) is established.
10. Infringement of registered trademarks
(1) If a person uses a mark that is the same as a registered trademark in the course of trade, and the goods or services are the same as the goods or services covered by the registered trademark, then the person constitutes infringement of the registered trademark.
(2) A person infringes a registered trademark if he uses a mark in the course of trade because (a) the mark is the same as the registered trademark and the related goods or services used are the same as the registered trademark. The goods or services of the registered trademark are similar, or
(b) the mark is similar to the registered trademark, and the related goods or services used are the same as or similar to the goods or services of the registered trademark.
There is a likelihood of confusion among the public, including the possibility of association with the trademark.
(3) A person infringes a registered trademark if he uses in the course of trade a mark that is identical or similar to the registered trademark, and
(b) The relevant goods or services are not similar to the goods or services for which the registered trademark is registered,
Moreover, the trademark enjoys a certain reputation in the UK. Without justifiable reasons, Use of the mark would take unfair advantage of, or have a detrimental effect on, the distinctiveness or reputation of the mark.
(4) The use of a mark mentioned in this article, in particular, refers to a person
(a) affixing it to the goods or their packaging;
(b) offer or expose for sale goods bearing the mark, place the goods on the market or, for that purpose, store goods bearing the mark, or provide services under the mark;
(c) Import or export goods bearing this mark; or
(d) use this mark in business documents or in advertising.
(5) If a person uses a registered trademark on materials for product labeling or product packaging, on materials for commercial documents, or for advertising goods or services If, when he uses the trademark, he knows or should have reason to believe that the use of the trademark is not duly authorized by the owner or licensor of the registered trademark, he shall be treated as a party who uses the above-mentioned materials that infringe the registered trademark. .
(6) None of the foregoing provisions of this section shall prohibit the use of a registered trademark for the purpose of identifying the goods or services of the owner or licensor of the registered trademark.
However, any such use, except in the course of honest practice in business and industrial affairs, without just cause, would take unfair advantage of, or be detrimental to the distinctiveness or reputation of, the mark. Treated as infringement of registered trademark.
11. Limitations on the effectiveness of registered trademarks
(1) If a registered trademark is used for registered goods and services, the use does not constitute an infringement of another registered trademark (but see Article 47(6) (Declaration of Registration Invalid effect))
(2) A registered trademark is not infringed if
(a) A person uses his or her own name or address,
(b) use a description of the type, quality, quantity, purpose, value, geographical origin, date of production of the goods or provision of the services, or other characteristics of the goods or services, or
(c) when there is When it is necessary to state the use of a product or service (especially accessories and spare parts),
provided that such use is carried out in accordance with the principles of good faith in business affairs.
(3) The use of a prior right in a specific location in commercial activities does not constitute infringement of a registered trademark (this location is the only location where it is applicable),
The "prior right" here refers to the continuous use of an unregistered trademark or other mark on relevant goods or services by a person or predecessor in his own name, and this use precedes the following situations:
(a) the use of the trademark by the owner or predecessor of the registered trademark in its own name in connection with those related goods or services, or
(b) owned by the registered trademark If the relevant goods or services are registered in the name of a person or in the name of a predecessor
the prior right shall be deemed to be used in that region, if the use of the prior right in a certain region is regulated by law protected (especially the law of passing off).
12． Exhaustion of the rights conferred by a registered trademark
(1) Use of the trademark on relevant goods that have been put on the European Economic Area market by or with the consent of the registered trademark owner does not constitute infringement. (2) Paragraph (1) of this Article does not apply if the owner of the registered trademark has a legal basis for not agreeing to further processing of these goods (especially if the condition of the goods has changed or been damaged after the goods were put on the market).
13. Registration subject to relinquishment or restriction
(1) The applicant for trademark registration or the owner of the registered trademark may
(a) waive any exclusive right to any specified part of the trademark;
(b) Agree that the rights obtained by registration shall be limited to designated territories or other conditions;
If the registration of a trademark involves a waiver of rights or restrictions, Article 9 ( Rights acquired through registered trademarks) are accordingly limited.
(2) The announcement and registration of waived or restricted matters shall be stipulated in the detailed rules.
Infringement litigation
14. Infringement litigation
(1) Infringement of a registered trademark can be brought by the trademark owner.
(2) In infringement proceedings, all remedies such as damages, injunctions, compensation or similar remedies available when other property rights are infringed are available.
15. Order to erase infringing marks
(1) For those who have been found to have infringed a registered trademark, the court may order them
(a) to erase the infringing marks, remove or eliminate the infringement or (b) if erasure, removal or removal of the infringing marks is impracticable, ensure that the infringing goods, materials or articles are destroyed . (2) If an order under subsection (1) is not carried out, or it appears to the court that it is probable that such an order will not be carried out, the court may, as the case may be, order that the infringing goods, materials or articles be handed over to a place designated by the court for erasure, A person who removes, eliminates, or destroys the above-mentioned goods.
16. Order to hand over infringing goods, materials or articles
(1) The owner of a registered trade mark may apply to the court for an order requiring that any infringing goods, materials or materials owned, kept or controlled by a person in the course of business activities be transferred to the court. or the goods are handed over to him or to such other person as the court may permit.
(2) No application shall be made after the period specified in section 18 (after which transfer relief shall not be available); and no order shall be made unless the court has made an order or in the opinion of the court There are grounds for making an order under section 19 (Order to deal with infringing property).
(3) If the court does not make an order under section 19, the person who receives delivery of any infringing goods, materials or things under this section shall, in the course of making the order, or under that section Retain these goods, materials or items pending a decision not to make an order.
(4) Nothing in this section shall affect the court’s other powers.
17. The meaning of infringing goods, materials or articles
(1) In this Law, the meanings of "infringing goods", "infringing materials" and "infringing articles" shall be as follows:
( 2) Goods related to a registered trademark are "infringing goods" if these goods or their packaging bear a mark that is the same as or similar to the trademark, and
(a) this mark appears on these goods or The use of the mark on the packaging has constituted infringement of the registered trademark, or
(b) the goods are intended to be imported into the UK, and the use of the mark on the goods or their packaging will constitute infringement of the registered trademark in the UK. infringement of the registered trademark, or
(c) the mark has been used on the relevant goods in a manner that infringes upon the registered trademark.
(3) The interpretation in subsection (2) of this section shall not affect the importation of goods lawfully imported into the UK under enforceable constitutional rights.
(4) Materials related to a registered trademark are "infringing materials" if the materials bear the same or similar marks as the trademark, or have one of the following:
(a) the material is used for labeling or packaging of goods in a commercial document, or for advertising goods or services, in a form that infringes the registered trademark, or (b) is intended to be so used, and such Use will constitute infringement of the registered trademark.
(5) "Infringing articles" related to a registered trademark refer to
(a) Articles that are specially designed or transformed to produce marks that are identical or similar to the trademark
(b) The person who possesses, has custody of, or controls these items knows or has reason to believe that these items have been or will be used in the production of infringing goods or materials.
18. Time limit for non-availability of surrender relief
(l) No application for an order under section 16 (Order to surrender infringing goods, materials or articles) shall be made after the expiration of the period of 6 years from the following date:
(a) in the case of infringing goods, the date on which the trademark was applied to the goods or their packaging; (b) in the case of infringing material, the date on which the trademark was applied to the material; or
(c) In the case of an infringing article, the date it was manufactured.
Except as mentioned in the following provisions.
(2) If during all or part of the above period, the owner of the registered trademark
(a) becomes incapacitated, or
(b) due to fraud Or conceal it so that he cannot discover these facts and thus cannot apply for an injunction.
Then the owner of the registered trademark may apply for a corresponding injunction at any time before the expiration of the six-year period. This period shall commence on the date on which his incapacity ends, or, as the case may be, on the date on which he, with due diligence, could discover those facts.
(3) "Incapacity" within the meaning of subsection (2),
(a) has the same meaning in England and Wales as in the Limitations Act 1980;
(b) in Scotland, legal incapacity within the meaning of the Regulations and Limitations (Scotland) Act 1973;
(c) in Northern Ireland, the Limitations 1989 Order (Northern Ireland) has the same meaning.
19. Order regarding the disposal of infringing goods, materials or articles
(1) Where infringing goods, materials or articles have been handed over pursuant to an order in section 16, the following application may be made to the court:
(a) For an order that they be destroyed or handed over to such person as the Court thinks fit to forfeit
(b) For an order from the Court not to make such an order.