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Part IE+W+S+N.I. Registered trade marks

Effects of registered trade markE+W+S+N.I.

9 Rights conferred by registered trade mark.E+W+S+N.I.

(1)The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.

The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10.

(2)References in this Act to the infringement of a registered trade mark are to any such infringement of the rights of the proprietor.

(3)The rights of the proprietor have effect from the date of registration (which in accordance with section 40(3) is the date of filing of the application for registration):

Provided that—

(a)no infringement proceedings may be begun before the date on which the trade mark is in fact registered; and

(b)no offence under section 92 (unauthorised use of trade mark, &c. in relation to goods) is committed by anything done before the date of publication of the registration.

10 Infringement of registered trade mark.E+W+S+N.I.

(1)A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2)A person infringes a registered trade mark if he uses in the course of trade a sign where because—

(a)the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b)the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

(3)A person infringes a registered trade mark if he uses in the course of trade[F1, in relation to goods or services,] a sign which—

(a)is identical with or similar to the trade mark, F2...

F2(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

(4)For the purposes of this section 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 a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trade mark 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 in the preceding provisions of this section 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 a licensee.

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

Annotations:

Amendments (Textual)

F2S. 10(3)(b) and preceding word omitted (5.5.2004) by virtue of Trade Marks (Proof of Use, etc.) Regulations 2004 (S.I. 2004/946), regs. 1, 7(2)(b)

11 Limits on effect of registered trade mark.E+W+S+N.I.

(1)A registered 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 (but see section 47(6) (effect of declaration of invalidity of registration)).

(2)A registered trade mark is not infringed by—

(a)the use by a person of his own name or address,

(b)the use of indications concerning 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, or

(c)the use 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.

(3)A registered trade mark 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.

For this purpose an “earlier right” means 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—

(a)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

(b)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;

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).

12 Exhaustion of rights conferred by registered trade mark.E+W+S+N.I.

(1)A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.

(2)Subsection (1) does not apply where 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).

13 Registration subject to disclaimer or limitation.E+W+S+N.I.

(1)An applicant for registration of a trade mark, or the proprietor of a registered trade mark, may—

(a)disclaim any right to the exclusive use of any specified element of the trade mark, or

(b)agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation;

and where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 9 (rights conferred by registered trade mark) are restricted accordingly.

(2)Provision shall be made by rules as to the publication and entry in the register of a disclaimer or limitation.

Annotations:

Commencement Information

I1S. 13 wholly in force at 31.10.1994; s. 13 not in force at Royal Assent see s. 109; s. 13(2) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 13 not already in force by S.I. 1994/2550, arts. 2, 3(1), Sch.