Trade Marks Act 1994

Trade Mark Rules 2000

Madrid Protocol 1989

Uniform Domain Name Dispute Resolution Policy 1999

 

TMs act 1994

1 TMs

2 Registered TMs

3 Absolute grounds for refusal of registration

4 Specially protected emblems

5 Relative grounds for refusal

9 Rights of an RTM

10 Infringement of registered TM

11 Limits of RTM

12 Exhaustion of rights of RTM

21 Remedy for groundless threats

25 Registration of transactions affecting registered TM

 

Trade Mark Rules 2000

 

Madrid Protocol 1989

 

Uniform Domain Name Dispute Resolution Policy 1999

 

 

Trade Marks act 1994

 

1 Trade Marks

1) “TM” means any sign capable of being represented graphically which is capable of distinguishing G/S of one undertaking from those of other undertakings

A TM may in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

 

2 Registered TMs

1) A RTM is a property right obtained by registration of the TM under this act and the proprietor of a RTM has rights and remedies provided by this act

 

3 Absolute grounds for refusal of registration

1) The following shall not be registered:

a) signs which do not satisfy 1) (1)

b) TMs devoid of distinctive character

c) TMs consisting exclusively of signs or indications which may serve in trade, to designate kind, quality, quantity, intended purpose, value, geographic origin, the time of production of goods or of rendering of services, or other characteristics of G/S.

d) TMs which consist exclusively of signs or indications which have become customary in the current language or bona fide & established practices of the trade but, a TM shall not be refused (by virtue of paragraph b), c) or d)) if it has acquired a distinctive character as a result of the use made of it before the application date.

2) a sign shall not be registered if it consists exclusively of:

a) the shape which results from the good's nature,

b) the shape necessary for a technical result,

c) the shape which gives substantial value to the goods.

3) a TM shall not be registered if it is:

a) contrary to public policy or to accepted principles of morality,

b) of such a nature as to deceive the public.

4) a TM shall not be registered to the extent that its use is prohibited in the UK by law or community law.

5) a TM shall not be registered in cases referred to in section 4.

6) a TM shall not be registered if or to the extent that the application is made in bad faith.

 

4 Specially protected emblems

1) A TM which consists of or contains

a) the royal arms etc.

b) the royal crown or any of the royal flags.

c) any member of the royal family.

d) words, letters or devices likely to lead persons to think that the applicant has or has had royal patronage or authorization

shall not be registered without consent etc.

2) a TM which consists of or contains a representation of a national flag of the UK or of England, Wales, Scotland, Northern Ireland or the Isle of Man, shall not be registered if use would be misleading or grossly offensive

3) ~ provisions for emblems of convention countries and of certain international organizations.

4) ~ provision for rules for arms entitled to a person or likely to be mistaken for them.

5) a TM with a controlled representation under the Olympic symbol protection act 1995 shall not be registered unless the applicant is appointed by the secretary of state or permitted by such a person.

 

5 Relative grounds for refusal

1) A TM shall not be registered if it is identical with an earlier TM and the G/S applied for are identical with the G/S protected

2) A TM shall not be registered if because:

a) it is identical with an earlier TM and is to be registered for G/S similar to those protected, or

b) it is similar to an earlier TM and is to be registered for G/S identical with or similar to those protected

there is a likelihood of confusion [by] the public, which includes the likelihood of association with the earlier TM.

2) A TM which is identical with or similar to an earlier TM, shall not be registered if, or to the extent that, the earlier TM has a reputation in the UK (or EC for CTMs) 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 TM.

3)A TM shall not be registered if, or to the extent that, its use in the UK is liable to be prevented:

a) by any rule of law (E.g. passing off) protecting an unregistered TM or other sign used in the course of trade,

b) by an earlier right (E.g. ©, DR or RDR) other than those referred to in (1) (2) or (3) or paragraph (a) above.

A person thus entitled to prevent use of a TM is the proprietor of an “earlier right” in relation to the TM

4)Nothing in this section prevents the registration of a TM where the proprietor of the earlier TM or other earlier right consents to the registration.

 

9 Rights under an RTM

1) Proprietor has exclusive rights in the TM which are infringed by use of the TM in the UK without his consent.

3) The rights of the proprietor have effect from the registration date provided that:

a) no infringement proceedings may begin before the registration date,

b) no offence is committed by anything done before the publication date.

 

10 Infringement of registered TM

1) A person infringes an RTM if he uses a sign in the course of trade which is identical to the TM and for G/S identical to those registered for.

2) A person infringes an RTM if he uses a sign in the course of trade which due to

a) the sign being identical to the TM and used for similar G/S to those registered

b) the sign being similar to the TM and used for identical or similar G/S to those registered

there exists a likelihood of confusion [by] the public, which includes the likelihood of association with the TM.

3) A person infringes an RTM if he uses in the course of trade in relation to G/S a sign which:

a) is identical with or similar to the TM, and

b) is used in relation to G/S which are not similar to those for which the TM is registered,

where the TM 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 TM's distinctive character or repute.

4) A person uses a sign if, in particular, he:

a) affixes it to goods or the packaging thereof,

b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign

c) imports or exports goods under the sign, or

d) uses the sign on business papers or in advertising

5) A person who applies an RTM to material intended to be used for labelling or packaging goods, as a business paper, or for advertising G/S, shall be treated as a party to any use of the material which infringes the RTM if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee

6) Nothing here shall prevent the use of an RTM by any person for the purpose of identifying G/S as those of the proprietor or a licensee.

But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the RTM if the use without due cause takes unfair advantage of, or is detrimental to, the TM's distinctive character or repute.

 

11 Limits of effect of an RTM

1) No infringement by use of another RTM for G/S for which the latter is registered.

2) An RTM is not infringed by:

a) the use of own name or address,

b) use of indications of kind, quality, quantity, purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics,

c) use of the TM where it is necessary to indicate the intended purpose provided the use is in accordance with honest practices in industrial or commercial matters.

3) an RTM is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality. An “earlier right” means an UTM or other sign continuously used for G/S by a person (or a predecessor in title) from a date prior to the earlier of:

a) the use of the first-mentioned TM for G/S by the proprietor (or a predecessor in title of his), or

b) the registration of the first mentioned TM for those G/S in the proprietor's name (or a predecessor in title),

and an earlier right shall be regarded as applying in a locality to the extent that, its use [there] is protected by [Passing Off]..

 

12 Exhaustion of rights of RTM

21 Remedy for groundless threats

25 Registration of transactions affecting registered TM

 

Trade Marks Rules 2000 Classification of Goods and Services

(CDMAC 676 261 33 245 BPM)

Compositions (6); (1 Industrial, 2 Decoratory, 3 Cosmetic, 4 Greases, 5 Biological, 6 Metallic)

Devices (7); (7 Machines, 8 Hand tools, 9 Scientific, 10 Surgical, 11 Environmental, 12 Vehicular, 13 Ballistic)

Materials (6); (14 Precious, 15 Musical instruments, 16 Paper, 17 Rubber & extruded plastics, 18 Leather, 19 Building material)

Articles (2); (20 Furniture, 21 Utensils)

Cloth articles (6); (22 Canvaslike, 23 Thread, 24 Other textiles, 25 Clothing, 26 Decoratory, 27 Floor coverings)

28 Toys (1)

Food (3); (29 Meat & perishables, 30 Staples, 31 Fresh & live food)

Consumables (3); (32 non-alcoholic drinks and beer, 33 other alcoholic drinks, 34 tobacco)

Business service (2); (35 Advertising & management, 36 Financial)

Physical & Telecoms service (4); (37 Construction & repair, 38 Telecoms, 39 Transport, 40 Materials treatment)

Mental & Personal service (5); (41 Education/entertainment, 42 Scientific/legal, 43 Hospitality, 44 Medical, agriculture & beauty, 45 Personal & security)

 

Madrid Protocol 1989

1 Membership

All contracting states (including contracting organisations) not party to the Madrid Agreement 1979, shall be members of the same union as members of the Madrid Agreement.

 

2 International registration

The person referred to by a mark application filed or registered with the office of one party, may secure protection for the mark in the territory of the contracting parties, by registering the mark at the IB (WIPO), provided that the person is a national of that contracting state or a state member of that contracting organisation, or is domiciled, or has a commercial establishment in that state.

 

3 International application

Every international application shall be on the prescribed form. The office shall certify that the particulars correspond to the basic application or registration. The office shall indicate the date of the international application as well as the date and number of the application, and if applicable of the registration.

The applicant must indicate the G/S in which protection is claimed and if possible the corresponding class(es) according to the Nice classification, (otherwise the international bureau will). The applicant's indication of classes shall be subject to control by the IB in association with the office of origin. (The IB prevails in the event of disagreement with the office).

If the applicant claims colour as a distinctive feature, he must state this and file therewith a notice specifying the colour or colour combination, and append colour copies, which shall be attached to the notifications given by the IB, (the number of such copies being by regulation).

 

Uniform Domain Name Dispute Resolution Policy 1999

4b The following circumstances in particular shall be evidence of the registration and use of a DN in bad faith:

circumstances indicating you registered or acquired the DN primarily for selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the TM or SM, or to a competitor of that complainant, for consideration in excess of your documented out of pocket costs directly related to the DN.

You registered the DN in order to prevent the owner of the TM or SM from reflecting the mark in a corresponding DN, provided that you have engaged in a pattern of such conduct.

You registered the DN primarily for disrupting the business of a competitor.

By using the DN you have attempted to attract traffic, for commercial gain, by likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your site or of a product or service on your site.