Trade Marks Act 1994
| Jurisdiction | UK Non-devolved |
| Citation | 1994 c. 26 |
| Year | 1994 |
Trade Marks Act 1994
1994 CHAPTER 26
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]
B e 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...
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