account of profits — accounting and payment of profits Section 102

accounts — count, reckoning and payment Section 102

an actionable threat — a threat of infringement proceedings that is actionable in accordance with this section Section 21A(7)

appointed day — the day appointed for the coming into force of paragraph 1 of Schedule 4 to the Legal Services Act 2007; “manager”, in relation to a body, has the same meaning as in the Legal Services Act 2007 (see section 207) Section 83A(7)

appointed person — a person appointed by the Lord Chancellor to hear and decide appeals under this Act Section 77(1)

Continuing EUTM Regulation — Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark as it has effect in EU law Schedule 2A, Part 2, paragraph 23(5)

Convention country — a country, other than the United Kingdom, which is a party to that Convention or to that Agreement Section 55(1)

earlier right — 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— 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). 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 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 Section 11(3)

earlier trade mark — — a registered trade mark ... or international trade mark (UK) ... 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, a comparable trade mark (EU) or a trade mark registered pursuant to an application made under paragraph 25 of Schedule 2A which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired; a comparable trade mark (IR) or a trade mark registered pursuant to an application made under paragraph 28, 29 or 33 of Schedule 2B which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired; . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a registered trade mark or international trade mark (UK) which— prior to IP completion day has been converted from a European Union trade mark or international trade mark (EC) which itself had a valid claim to… Section 6(1)

exclusive licence — 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 Section 29(1)

existing ITM application — an international application which contains a request for extension of the protection resulting from an international registration to the European Union under Article 3ter(1) which has been filed with the Office of origin in accordance with Article 2(2) Schedule 2B, Part 4, paragraph 33(7)

existing registered mark — a trade mark, certification trade mark or service mark registered under the 1938 Act immediately before the commencement of this Act Schedule 3, paragraph 1(1)

existing request for EU extension — a request for extension to the European Union of the protection resulting from an international registration made subsequent to the international registration pursuant to Article 3ter(2) which has been filed with the Office of origin or the International Bureau (as the case may be) in accordance with Rule 24(2); the Schedule 2B, Part 4, paragraph 33(7)

granted — the European Union Intellectual Property Office having sent to the International Bureau a statement to the effect that protection is granted to the mark in the European Union in accordance with Rule 18ter; and the reference to the request for extension of protection to the European Union being Schedule 2B, Part 3, paragraph 27(4)

granted — a European Union trade mark being registered under the European Union Trade Mark Regulation pursuant to the transformation application; and the reference to the transformation application being Schedule 2B, Part 4, paragraph 32(3)

honest concurrent use — 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 Trade Marks Act 1938 Section 7(3)

international registration — a registration made in the International Register in accordance with the Madrid Protocol Schedule 2B, Part 1, paragraph 1(11)

international trade mark — a trade mark which is the subject of an international registration Schedule 2B, Part 1, paragraph 1(11)

international trade mark (UK) — a trade mark which is entitled to protection in the United Kingdom under that Protocol Section 53

Nice Classification — 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 Section 60A(2)

professional adviser — a person who, in relation to the making of the communication containing the threat— is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means) Section 21D(2)

protected EU designation — an international registration which prior to its cancellation was protected in the European Union in accordance with Article 189(2) of the European Union Trade Mark Regulation Schedule 2B, Part 4, paragraph 33(7)

publish — make available to the public, and references to publication— in relation to an application for registration, are to publication under section 38(1), and in relation to registration, are to publication under section 40(4); “statutory provisions” includes provisions of subordinate legislation within the meaning of the Interpretation Act 1978; “trade” includes any business or profession Section 103(1)

pursuant to this Part — an application that is of the type mentioned in paragraph 28(1)(b) or 29(1)(b) and that is made within the period mentioned in paragraph 28(1)(c) or 29(1)(c) (as the case may be) Schedule 2B, Part 3, paragraph 30(4)

refused — the European Union Intellectual Property Office having sent to the International Bureau a notification of refusal in accordance with Article 5(1) or (2) which refusal has not been subsequently `withdrawn Schedule 2B, Part 3, paragraph 27(4)

refused — the transformation application being subject to the provisions in Article 204(5) of the European Union Trade Mark Regulation Schedule 2B, Part 4, paragraph 32(3)

registered person — — a registered trade mark attorney, or a body (corporate or unincorporate) registered in the register kept under section 83 Section 83A(7)

regular national filing — 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 Schedule 3, paragraph 14(3)

regular national filing — 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 Section 35(3)

regulated person — a person who is not a registered person but is a manager or employee of a body which is a registered person Section 83A(7)

relevant offence — an offence under section 92 above (unauthorised use of trade mark, &c in relation to goods), an offence under the Trade Descriptions Act 1968, an offence under the Business Protection from Misleading Marketing Regulations 2008, an offence under Chapter 1 of Part 4 of the Digital Markets, Competition and Consumers Act 2024, or any offence involving dishonesty or deception Section 97

relevant offence — an offence under section 92 above (unauthorised use of trade mark, &c in relation to goods), an offence under the Trade Descriptions Act 1968, an offence under the Business Protection from Misleading Marketing Regulations 2008, an offence under Chapter 1 of Part 4 of the Digital Markets, Competition and Consumers Act 2024, or any offence involving dishonesty or deception Section 98(14)

relevant period — the period of twelve months beginning with the day after that on which IP completion day falls Schedule 2A, Part 1, paragraph 17(7)

relevant period — the period of twelve months beginning with the day after that on which IP completion day falls Schedule 2A, Part 1, paragraph 18(6)

relevant period — the period of six months beginning with the day after that on which IP completion day falls Schedule 2A, Part 1, paragraph 5(7)

relevant period — the period of nine months beginning with the day after that on which IP completion day falls Schedule 2A, Part 3, paragraph 25(3)

relevant period — the period of twelve months beginning with the day after that on which IP completion day falls Schedule 2B, Part 1, paragraph 18(7)

relevant period — the period of twelve months beginning with the day after that on which IP completion day falls Schedule 2B, Part 1, paragraph 19(6)

relevant period — the period of six months beginning with the day after that on which IP completion day falls Schedule 2B, Part 1, paragraph 5(7)

relevant period — the period of nine months beginning with the day after that on which IP completion day falls Schedule 2B, Part 2, paragraph 24(3)

relevant period — the period of nine months beginning with the day after that on which IP completion day falls Schedule 2B, Part 4, paragraph 33(7)

the 1938 Act — the Trade Marks Act 1938 Schedule 3, paragraph 1(1)

the Common Regulations — the Common Regulations under the Madrid Agreement concerning the international registration of marks and the Madrid Protocol in force on 1st November 2017; “corresponding (IR)” has the meaning given by paragraph 3(4); “existing IR(EU)” has the meaning given by paragraph 1(1); “expired IR(EU)” has the meaning given by paragraph 23(1); “international application” has the meaning given by paragraph 27(1)(c); “the International Register” has the meaning given by paragraph 1(11)(a); “international registration” has the meaning given by paragraph 1(11)(b); “international trade mark” has the meaning given by paragraph 1(11)(c); “Office of origin” has the meaning given by Article 2(2) Schedule 2B, Part 5, paragraph 34(1)

the court — — in England and Wales , the High Court , or the county court where it has jurisdiction by virtue of an order made under section 1 of the Courts and Legal Services Act 1990, in Northern Ireland, the High Court, and in Scotland, the Court of Session Section 75

the court — — in relation to an order made on an application under subsection (2)(a), the sheriff, and in relation to an order made under subsection (2)(b), the court which imposed the penalty Section 98(14)

the European Union Trade Mark Regulation — 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) Section 51

the EUTM Register — the register of European Union trade marks maintained by the European Union Intellectual Property Office Schedule 2A, Part 1, paragraph 1(9)

the International Register — the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol Schedule 2B, Part 1, paragraph 1(11)

the Madrid Protocol — 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 .. Section 53

the old law — that Act and any other enactment or rule of law applying to existing registered marks immediately before the commencement of this Act Schedule 3, paragraph 1(1)

the Paris Convention — the Paris Convention for the Protection of Industrial Property of March 20th 1883, as revised or amended from time to time, . . Section 55(1)

the previous EUTM Regulations — Council Regulation (EC) No 207/2009 of 26th February 2009 on the European Union trade mark and Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade mark; “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008 Schedule 2A, Part 5, paragraph 30(1)

the previous EUTM Regulations — Council Regulation (EC) No 207/2009 of 26th February 2009 on the European Union trade mark and Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade mark; “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008 Schedule 2B, Part 5, paragraph 34(1)

the registrar — the Comptroller-General of Patents, Designs and Trade Marks Section 62

the relevant period — the period of 5 years ending with the date of the application for registration mentioned in subsection (1)(a) or (where applicable) the date of the priority claimed for that application Section 6A(1A)

the WTO agreement — the Agreement establishing the World Trade Organisation signed at Marrakesh on 15th April 1994 , and a Section 55(1)

trade mark — any sign which is capable— A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging. 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, and of distinguishing goods or services of one undertaking from those of other undertakings Section 1(1)

trade mark agency work — work done in the course of carrying on the business of acting as agent for others for the purpose of— applying for or obtaining the registration of trade marks in the United Kingdom or elsewhere , or conducting proceedings before the Comptroller relating to applications for or otherwise in connection with the registration of trade marks Section 83A(7)

trade mark attorney — — a registered trade mark attorney, or a partnership entitled to describe itself as a firm of registered trade mark attorneys, or any other unincorporated body or a body corporate entitled to describe itself as a registered trade mark attorney or a person whose name appears on the list of professional representatives for trade mark matters maintained by the European Union Intellectual Property Office referred to in Article 120 of the European Union Trade Mark Regulation Section 87(3)

transitional period — the period of six months ending with IP completion day Schedule 2A, Part 2, paragraph 22(5)

transitional period — the period of six months ending with IP completion day Schedule 2B, Part 2, paragraph 23(6)