Trade Marks

Trade Marks Act 1994

Jane Lambert
Last Updated 25 Feb 2004

This article previously appeared on the NIPCLAW website

UK trade marks law was remodelled by the Trade Marks Act 1994 ("the TMA"). This legislation implements the First Trade Marks Directive (First Directive 89/104/EEC of the Council, of 21 December 1988, to approximate the Laws of the Member States relating to Trade Marks and gives effect to the Madrid Protocol for the International Registration of Marks.

The Act
The TMA consists of 4 Parts and 3 Schedules set out as follows:

	Part 1: The first 50 sections deal with registered trade marks, that is to say the definition of trade marks and registered trade marks, grounds for refusal of registration, effects of registration, infringement proceedings, registered trade marks as property, licensing, applications for registration, duration, surrender, revocation and invalidity and collective and certification marks.
	Part II: This Part deals with Community trade marks, the Madrid Protocol and the provisions of the Paris Convention relating to trade marks;
	Part III: This provides for the register, the powers and duties of the registrar, the Trade Marks Registry, trade mark agents, border controls of infringing goods and articles, offences and forfeiture of counterfeit goods; and
	Part IV: This contains interpretation sections and other miscellaneous or general provisions.

The Schedules deal respectively with collective marks, certification marks and transitional provisions. The Act has been amended a number of times and there is an unofficial consolidation on the Patent Office website,

Secondary Legislation.
S.78 (1) of the TMA enables the Secretary of State to make rules under the Act. Pursuant to that power, he has made the Trade Marks Rules 2000 ("the Rules") and various other statutory instruments which are listed in the Patent Office Trade Marks Law Index.

The Register
S.63 of the Act requires the "registrar" (who is the Comptroller-General of Patents, Designs and Trade Marks) to maintain a register of trade marks. The register contains entries in respect of registered trade marks, prescribed particulars of registrable transactions affecting registered marks and other matters.

Applications for Registration
Applications to register a sign as a mark are made to the registrar under s.32 of the TMA. The procedure is governed by the Rules which are applied in accordance with the Trade Marks Registry Work Manual. The registrar examines each application to see whether it complies with the Act and Rules. If it does, he publishes it whereupon anyone objecting to the application may oppose it or make observations as to whether or not it should be granted. If no notice of opposition is given or all opposition proceedings are withdrawn or decided in the applicant's favour the registrar registers the mark unless it appears to him that, having regard to matters coming to his notice since accepting the application, that it was accepted in error. Applications may now be made electronically.

Duration
A trade mark is registered for a period of 10 years from the date of registration (s.42 (1) which may be renewed for further periods of 10 years (s.42 (2)).

Effect of Registration
The proprietor of a registered trade mark has exclusive rights in the trade mark that are infringed by its use in the UK without his or her consent (s. 9 (1)). Those rights have effect from the date of filing of the application for registration (s.9 (3). However, no action may be taken before the date on which a trade mark is registered and no offence is committed by anything done before publication of the registration.

Infringement
S.10 of the TMA provides that a registered trade mark may be infringed by using in the course of trade a sign:

	which is identical with the registered trade mark in relation to goods or services which are identical with those for which the mark is registered (s.10 (1));
	where, because the sign is identical with the registered trade mark and is used in relation to goods or services similar to those for which the mark is registered, or, because the sign is similar to the registered mark and is used in relation to goods or services that are identical with or similar to those for which that mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the registered mark (s.10 (2));or
	which is identical with or similar to the registered trade mark and is used in relation to goods or services which are not necessarily similar to those for which the trade mark is registered, where the trade mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark (s.10 (3)).

"Use" for these purposes includes affixing a sign to goods or their packaging, offering or exposing goods for sale, putting them on the market, stocking them for those purposes under such sign, offering or supplying services under the sign, importing or exporting under the sign or using it on business papers or in advertising (s.10 (4)). However, a person who applies a registered trade mark to material for labelling or packaging goods, as business paper, or for advertising is liable only if he knew or had reason to believe that such application had not been authorized by the proprietor or licensee when he applied the mark.

Under previous legislation, a trade mark could be infringed by comparative advertising. S.10 (6) permits such use by providing that nothing in s.10 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 his licensee. However, any such use otherwise than in accordance with honest practices in industrial or commercial matters may still infringe if that use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.

Limits
Ss.11 and 12 of the Act provide that a 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 although should that other mark be declared invalid it shall be deemed never to have been made (s.11 (1) and s.47 (6));
	by a person of his own name or address provided the use is in accordance with honest practices in industrial or commercial matters (s.11 (2) (a));
	of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services or other characteristics of goods or services provided the use is in accordance with honest practices in industrial or commercial matters (s.11 (2) (b));
	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 (s.11 (2) (c));
	in the course of trade in a particular locality of an earlier right (that is to say, an unregistered trade mark or other sign) which applies in that locality provided that such unregistered mark was used before the registered mark was first used or first registered and could be protected in the locality under the law of passing off or some other rule of law (s.11 (3)); or
	of the trade mark in relation to goods which have been put on the market in the EEA under that mark by the proprietor or with his consent unless 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) (s.12).

Removal from the Register
A trade mark may be surrendered by the registered proprietor, revoked or declared invalid.

Surrender
To protect the interests of those having a right in the registered mark, rule 26 (2) requires the registered proprietor to notify the name and address of any person having a registered interest in the mark, and certify that any such person has been sent not less than 3 months' notice of the proprietor's intention to surrender the mark, he or she is not affected by the surrender or, if affected, he or she consents to it.

Revocation
A trade mark may be revoked by the registrar or the court pursuant to s.46 (1) TMA if:

	within the period of 5 years from completion of the registration procedure it has not been put to genuine use in the UK, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use (s.46 (1) (a));
	such use has been suspended for an uninterrupted period of 5 years, and there are no proper reasons for non-use (s.46 (1) (b));
	in consequence of acts or inactivity of the proprietor, the mark has become the common name in the trade for a product or service for which it is registered (s.46 (1) (c)); or
	in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services (s.46 (1) (d)).

Use" for the above purposes includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (s. 46 (1)). In Budejovicky Budvar NP's Trade Mark [2002] EWCA Civ 1534, the Court of Appeal affirmed the hearing officer's decision that the question whether use had been in a form that does not alter the distinctive character of a mark in the form in which it was registered is to be determined from the perspective of the consumer. Further, "use" in the UK includes affixing the mark to goods or packaging for export in the UK.

Invalidity
A trade mark may be declared invalid by the registrar or court pursuant to s.47 on the ground that:

	it was registered in breach of s.3 TMA or any provision referred to in that section unless (in the case of a registration in breach of s. 1 (b), (c) or (d)) the mark has acquired after registration a distinctive character in relation to the goods or services for which it was registered in consequence of the use that has been made of it (s.47 (1)); or
	there is an earlier trade mark in relation to which the conditions set out in s.5 (1), (2) or (3) obtain, or an earlier right to which the condition set out in s.5 (4) is satisfied (s.47 (2)).

Finally, the registrar himself apply to the court for a declaration of invalidity in he case of bad faith in the registration of a mark.

Important