lexiara

TMA 1994 — Trade Marks Act 1994

law · United Kingdom · ukpga/1994/26

1088 provisions

Defined terms · All instruments

1 Trade marks.
1
2
2 Registered trade marks.
1
2
3 Absolute grounds for refusal of registration.
1
2
3
4
4A
4B
4C
4D
5
6
4 Specially protected emblems.
1
2
3
4
5
5 Relative grounds for refusal of registration.
1
2
3
3A
4
4A
4B
5
6
5A Grounds for refusal relating to only some of the goods or services
6 Meaning of “earlier trade mark”.
1
1A
2
2A
2B
2C
3
6A Raising of relative grounds in opposition proceedings in case of non-use
1
1A
2
3
4
5
5A
6
7
7 Raising of relative grounds in case of honest concurrent use.
1
2
3
4
5
8 Power to require that relative grounds be raised in opposition proceedings.
1
2
3
4
5
6
9 Rights conferred by registered trade mark.
1
1A
1B
2
3
10 Infringement of registered trade mark.
1
2
3
3A
3B
4
5
6
10A Right to prevent goods entering the UK without being released for free circulation
1
2
3
4
5
10B Prohibition on the use of a trade mark registered in the name of an agent or representative
1
2
11 Limits on effect of registered trade mark.
1
1A
1B
2
3
11A Non-use as defence in infringement proceedings
1
2
3
4
12 Exhaustion of rights conferred by registered trade mark.
1
2
13 Registration subject to disclaimer or limitation.
1
2
14 Action for infringement.
1
2
15 Order for erasure, &c. of offending sign.
1
2
16 Order for delivery up of infringing goods, material or articles.
1
2
3
4
17 Meaning of “infringing goods, material or articles”.
1
2
3
3A
4
5
18 Period after which remedy of delivery up not available.
1
2
3
19 Order as to disposal of infringing goods, material or articles.
1
2
3
4
5
6
20 Jurisdiction of sheriff court or county court in Northern Ireland.
21 Threats of infringement proceedings
1
2
21A Actionable threats
1
2
3
4
5
6
7
21B Permitted communications
1
2
3
4
5
21C Remedies and defences
1
2
3
21D Professional advisers
1
2
3
4
5
21E Supplementary: pending registration
1
2
21F Supplementary: proceedings for delivery up etc.
22 Nature of registered trade mark.
23 Co-ownership of registered trade mark.
1
2
3
4
5
6
24 Assignment, &c. of registered trade mark.
1
1A
2
3
4
5
6
25 Registration of transactions affecting registered trade mark.
1
2
3
4
5
6
26 Trusts and equities.
1
2
27 Application for registration of trade mark as an object of property.
1
2
3
28 Licensing of registered trade mark.
1
2
3
4
5
29 Exclusive licences.
1
2
30 General provisions as to rights of licensees in case of infringement.
1
1A
2
3
4
5
6
6A
7
31 Exclusive licensee having rights and remedies of assignee.
1
2
3
4
5
6
7
8
32 Application for registration.
1
2
3
4
33 Date of filing.
1
2
34 Classification of trade marks.
1
2
35 Claim to priority of Convention application.
1
2
3
4
5
6
36 Claim to priority from other relevant overseas application.
1
2
3
37 Examination of application.
1
2
3
4
5
38 Publication, opposition proceedings and observations.
1
2
2A
2B
3
39 Withdrawal, restriction or amendment of application.
1
2
3
40 Registration.
1
2
3
4
41 Registration: supplementary provisions.
1
2
3
42 Duration of registration.
1
2
43 Renewal of registration.
1
2
3
3A
4
5
6
44 Alteration of registered trade mark.
1
2
3
45 Surrender of registered trade mark.
1
2
46 Revocation of registration.
1
2
3
4
5
6
47 Grounds for invalidity of registration.
1
2
2ZA
2A
2B
2C
2D
2DA
2E
2F
2G
2H
3
4
5
5A
6
48 Effect of acquiescence.
1
2
49 Collective marks.
1
1A
2
50 Certification marks.
1
2
51 Meaning of “European Union trade mark”
52 Power to make provision in connection with European Union Trade Mark Regulation.
52A Certain trade marks registered as European Union trade marks to be treated as registered trade marks
53 The Madrid Protocol.
54 Power to make provision giving effect to Madrid Protocol.
1
2
3
4
54A Certain international trade marks protected in the European Union to be treated as registered trade marks
55 The Paris Convention.
1
2
3
56 Protection of well-known trade marks: Article 6bis.
1
2
2A
3
57 National emblems, &c. of Convention countries: Article 6ter.
1
2
3
4
5
6
58 Emblems, &c. of certain international organisations: Article 6ter.
1
2
3
4
5
59 Notification under Article 6ter of the Convention.
1
2
3
4
5
60 Acts of agent or representative: Article 6septies.
61
60A Similarity of goods and services
1
2
62 The registrar.
63 The register.
1
2
3
64 Rectification or correction of the register.
1
2
3
4
5
65 Adaptation of entries to new classification.
1
2
3
4
5
66 Power to require use of forms.
1
2
67 Information about applications and registered trade marks.
1
2
3
68 Costs and security for costs.
1
2
3
69 Evidence before registrar.
70 Exclusion of liability in respect of official acts.
1
2
3
71 Registrar’s annual report.
1
2
72 Registration to be prima facie evidence of validity.
73 Certificate of validity of contested registration.
1
2
74 Registrar’s appearance in proceedings involving the register.
1
2
3
75 The court.
76 Appeals from the registrar.
1
2
3
4
5
6
77 Persons appointed to hear and determine appeals.
1
2
3
4
5
6
78 Power of Secretary of State to make rules.
1
2
3
79 Fees.
1
2
80 Hours of business and business days.
1
2
3
81 The trade marks journal.
82 Recognition of agents.
83 The register of trade mark attorneys
1
2
3
4
5
6
7
83A Regulation of trade mark attorneys
1
2
3
4
5
6
7
84 Unregistered persons not to be described as registered trade mark agents.
1
2
3
4
85 Power to prescribe conditions, &c. for mixed partnerships and bodies corporate.
86 Use of the term “trade mark attorney”.
1
2
87 Privilege for communications with registered trade mark agents.
1
2
3
4
88 Power of registrar to refuse to deal with certain agents.
1
2
89 Infringing goods, material or articles may be treated as prohibited goods.
1
2
3
90 Power of Commissioners of Customs and Excise to make regulations.
1
2
3
4
5
91 Power of Commissioners for Revenue and Customs to disclose information.
92 Unauthorised use of trade mark, &c. in relation to goods.
1
2
3
4
5
6
92A Search warrants
1
2
3
4
5
93 Enforcement function of local weights and measures authority.
1
2
3
3A
4
5
94 Falsification of register, &c.
1
2
3
95 Falsely representing trade mark as registered.
1
2
3
96 Supplementary provisions as to summary proceedings in Scotland.
1
2
97 Forfeiture: England and Wales or Northern Ireland.
1
2
3
4
5
6
7
8
98 Forfeiture: Scotland.
1
2
3
4
5
6
7
8
9
10
11
12
13
14
99 Unauthorised use of Royal arms, &c.
1
2
3
4
5
99A Reproduction of trade marks in dictionaries, encyclopaedias etc.
1
2
3
4
100 Burden of proving use of trade mark.
101 Offences committed by partnerships and bodies corporate.
1
2
3
4
5
102 Adaptation of expressions for Scotland.
103 Minor definitions.
1
2
3
104 Index of defined expressions.
105 Transitional provisions.
106 Consequential amendments and repeals.
1
2
107 Territorial waters and the continental shelf.
1
2
3
108 Extent.
1
2
109 Commencement.
1
2
110 Short title.
1
2
3
1
2
4
1
2
5
1
2
3
4
6
1
2
7
1
2
3
4
8
9
10
1
2
3
11
12
1
2
3
4
5
6
7
13
14
1
2
3
1
2
4
5
1
2
6
1
2
7
1
2
8
1
2
3
4
9
10
11
1
2
3
12
13
14
15
16
1 A trade mark registered as an existing EUTM to be treated as registered under this Act
1
2
3
4
5
6
7
8
9
2 Opt out
1
2
3
4
5
3 Entries to be made in the register in relation to a comparable trade mark (EU)
1
2
3
4 Comparable trade mark (EU) which derives from an EU Collective Mark or EU Certification Mark
1
2
3
4
5
6
5 Renewal of a comparable trade mark (EU) which expires within six months after IP completion day
1
2
3
4
5
6
7
6 Restoration of a comparable trade mark (EU)
7 Raising of relative grounds in opposition proceedings in case of non-use
1
2
3
8 Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (EU)
1
2
3
9 Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (EU)
1
2
3
10 Reputation of a comparable trade mark (EU)
1
2
11 Rights conferred by registered trade mark
12 Effect of claim of priority
1
2
3
13 Effect of seniority claim
1
2
3
4
14 Determination of invalidity and liability to revocation in relation to claims of seniority
1
2
3
4
5
6
7
8
15 Procedure for declaration that trade mark would have been liable to be revoked or declared invalid
1
2
16 Assignment of an existing EUTM not registered on IP completion day
1
2
3
17 Effect of a licence of an existing EUTM
1
2
3
4
5
6
7
18 Effect of a security interest in an existing EUTM
1
2
3
4
5
6
19 Continuity of rights in relation to a comparable trade mark (EU)
1
2
20 Existing EUTM: pending proceedings
1
2
3
4
5
6
7
8
21 Existing EUTM: effect of injunction
1
2
21A Existing EUTM: effect of invalidity or revocation
1
2
3
4
5
6
7
22 Registration of certain expired European Union trade marks
1
2
3
4
5
23 Renewal of an expired EUTM
1
2
3
4
5
24 Application of Part
1
2
25 Application for registration under this Act based upon an existing EUTM application
1
2
3
26 Right to claim seniority where seniority has been claimed by an existing EUTM application
1
2
3
27 Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 26
1
2
3
4
5
6
7
8
9
28 Restoration of a European Union trade mark to the EUTM Register
1
2
29 Restoration of an application for a European Union trade mark
1
2
30 Interpretation
1
2
1 An international trade mark protected in the European Union to be treated as registered under this Act
1
2
3
4
5
6
7
8
9
10
11
2 Opt out
1
2
3
4
5
6
3 Entries to be made in the register in relation to a comparable trade mark (IR)
1
2
3
4
4 Comparable trade mark (IR) which derives from a mark treated as an EU Collective Mark or EU Certification Mark
1
2
3
4
5
6
5 Renewal of a comparable trade mark (IR) which expires within six months after IP completion day
1
2
3
4
5
6
7
6 Restoration of a comparable trade mark (IR)
7 Raising of relative grounds in opposition proceedings in case of non-use
1
2
3
8 Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (IR)
1
2
3
9 Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (IR)
1
2
3
10 Reputation of a comparable trade mark (IR)
1
2
11 Rights conferred by registered trade mark
12 Effect of disclaimer
13 Effect of claim of priority
1
2
3
4
14 Effect of seniority claim
1
2
3
4
15 Determination of invalidity and liability to revocation in relation to claims of seniority
1
2
3
4
5
6
7
8
9
16 Procedure for declaration that trade mark would have been liable to be revoked or declared invalid
1
2
17 Assignment of an existing IR(EU) not registered on IP completion day
1
2
3
18 Effect of a licence of an existing IR(EU)
1
2
3
4
5
6
7
19 Effect of a security interest in an existing IR(EU)
1
2
3
4
5
6
20 Continuity of rights in relation to a comparable trade mark (IR)
1
2
21 Existing IR(EU): pending proceedings
1
2
3
4
5
6
7
8
22 Existing IR(EU): effect of injunction
1
2
23 Registration of certain expired international trade marks
1
2
3
4
5
6
24 Renewal of an expired IR(EU)
1
2
3
25 Renewal of an expired IR(EU): territorial extension under Article 3ter(1)
1
2
3
26 Renewal of an expired IR(EU): territorial extension under Article 3ter(2)
1
2
3
4
5
6
7
8
9
10
11
12
27 Interpretation
1
2
3
4
28 Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register prior to IP completion day
1
2
3
4
5
29 Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register on or after IP completion day
1
2
3
4
30 Right to claim seniority where seniority has been claimed by an existing ITM application or an existing request for EU extension
1
2
3
4
31 Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 30
1
2
3
4
5
6
7
8
9
10
32 Transformation applications
1
2
3
33 Application for registration based upon a cancelled international registration
1
2
3
4
5
6
7
34 Interpretation
1
2
3
1
1
2
2
1
2
3
3
1
2
4
1
2
5
6
1
2
7
8
1
2
3
4
5
6
9
1
2
3
4
5
10
1
2
3
11
1
2
3
12
13
14
1
2
3
4
5
6
7
15
1
2
3
16
17
1
2
18
1
2
19
1
2
20
1
2
21
22
1
2
3
1
1
2
2
1
2
3
4
3
1
2
3
4
5
6
7
1
2
8
1
2
3
9