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Trade Marks Act 1994

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Grounds for refusal of registrationU.K.

3 Absolute grounds for refusal of registration.U.K.

(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 thebona 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[F1, or another characteristic,] which results from the nature of the goods themselves,

(b)the shape[F1, or another characteristic,] of goods which is necessary to obtain a technical result, or

(c)the shape[F1, or another characteristic,] 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 F2... [F3other than law relating to trade marks].

[F4(4A)A trade mark is not to be registered if its registration is prohibited by or under—

(a)any enactment or rule of law, [F5or ]

F6(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(c)any international agreement to which the United Kingdom F7... is a party,

providing for the protection of designations of origin or geographical indications.

(4B)A trade mark is not to be registered if its registration is prohibited by or under—

(a)any [F8enactment or rule of law], or

(b)any international agreement to which the [F9United Kingdom] is a party,

providing for the protection of traditional terms for wine or traditional specialities guaranteed.

(4C)A trade mark is not to be registered if it—

(a)consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and

(b)is in respect of plant varieties of the same or closely related species.

(4D)Subsection (4C)(a) refers to registration in accordance with any—

(a)enactment or rule of law, [F10or]

F11(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(c)international agreement to which the United Kingdom F12... is a party,

providing for the protection of plant variety rights.]

(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.

Textual Amendments

F1Words in s. 3(2) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 4(2) (with Pt. 5)

F3Words in s. 3(4) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 4(3) (with Pt. 5)

F4S. 3(4A)-(4D) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 4(4) (with Pt. 5)

4 Specially protected emblems.U.K.

(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.

[F13(5)A trade mark which consists of or contains a controlled representation within the meaning of the Olympic Symbol etc. (Protection) Act 1995 shall not be registered unless it appears to the registrar—

(a)that the application is made by the person for the time being appointed under section 1(2) of the Olympic Symbol etc. (Protection) Act 1995 (power of Secretary of State to appoint a person as the proprietor of the Olympics association right), or

(b)that consent has been given by or on behalf of the person mentioned in paragraph (a) above.]

Textual Amendments

F13S. 4(5) inserted (20.9.1995) by 1995 c. 32, s. 13(2) (with s. 13(3)); S.I. 1995/2472, art. 2

Commencement Information

I1S. 4 wholly in force at 31.10.1994; S. 4 not in force at Royal Assent see s. 109; s. 4(4) in force for certain purposes at 29.9.1994 and at 31.10.1994 insofar as s. 4 not already in force by S.I. 1994, arts. 2, 3(1), Sch.

5 Relative grounds for refusal of registration.U.K.

(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

F14(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom F15... 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.

[F16(3A)Subsection (3) applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.]

(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 [F17trade, where the condition in subsection (4A) is met,]

[F18(aa)by virtue of F19... any enactment or rule of law, providing for protection of designations of origin or geographical indications, where the condition in subsection (4B) is met, or]

(b)by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) [F20or (aa)] above, in particular by virtue of the law of copyright [F21or the law relating to industrial property rights].

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.

[F22(4A)The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application.

(4B)The condition mentioned in subsection 4(aa) is that—

(a)an application for a designation of origin or a geographical indication has been submitted prior to the date of application for registration of the trade mark or the date of the priority claimed for that application, and

(b)the designation of origin or (as the case may be) geographical indication is subsequently registered.]

(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.

[F23(6)Where an agent or representative (“R”) of the proprietor of a trade mark applies, without the proprietor’s consent, for the registration of the trade mark in R’s own name, the application is to be refused unless R justifies that action.]

Textual Amendments

F14S. 5(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(1)

F17Words in s. 5(4)(a) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 5(3) (with Pt. 5)

F18S. 5(4)(aa) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 5(4) (with Pt. 5)

F20Words in s. 5(4)(b) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 5(5)(a) (with Pt. 5)

F21Words in s. 5(4)(b) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 5(5)(b) (with Pt. 5)

F22S. 5(4A)(4B) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 5(6) (with Pt. 5)

[F245AGrounds for refusal relating to only some of the goods or servicesU.K.

Where grounds for refusal of an application for registration of a trade mark exist in respect of only some of the goods or services in respect of which the trade mark is applied for, the application is to be refused in relation to those goods and services only.]

Textual Amendments

6 Meaning of “earlier trade mark”.U.K.

(1)In this Act an “earlier trade mark” means—

(a)a registered trade mark F25... [F26or] international trade mark (UK) F27... 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,

[F28(aa)a comparable trade mark (EU) or a trade mark registered pursuant to an application made under paragraph 25 of Schedule 2A which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired;]

[F29(ab)a comparable trade mark (IR) or a trade mark registered pursuant to an application made under paragraph 28, 29 or 33 of Schedule 2B which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired;]

F30[F31(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(ba)a registered trade mark or international trade mark (UK) which—

(i)[F32prior to IP completion day] has been converted from a [F33European Union] trade mark or international trade mark (EC) which itself had a valid claim to seniority [F34of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired], and

(ii)accordingly has the same claim to seniority, 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 [F35or the WTO agreement] as a well known trade mark.

[F36(1A)In subsection (1), “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008.]

(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 earlier trade mark by virtue of subsection (1)(a) F37..., subject to its being so registered [F38(taking account of subsection (2C))].

[F39(2A)References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made pursuant to paragraph 25 of Schedule 2A and which if registered would be an earlier trade mark by virtue of subsection (1)(aa), subject to its being so registered.]

[F40(2B)References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made pursuant to paragraph 28, 29 or 33 of Schedule 2B and which if registered would be an earlier trade mark by virtue of subsection (1)(ab), subject to its being so registered.

(2C)Where an application for registration of a trade mark has been made pursuant to paragraph 25 of Schedule 2A or paragraph 28, 29 or 33 of Schedule 2B, subsection (l)(a) is to apply as if the date of application for registration of the trade mark were—

(a)in the case of an application made pursuant to paragraph 25 of Schedule 2A, the relevant date referred to in paragraph 25(2) in respect of that application;

(b)in the case of an application made pursuant to paragraph 28 of Schedule 2B, the relevant date referred to in paragraph 28(2) in respect of that application (taking account of paragraph 28(5));

(c)in the case of an application made pursuant to paragraph 29 of Schedule 2B, the relevant date referred to in paragraph 29(2) in respect of that application (taking account of paragraph 29(4));

(d)in the case of an application made pursuant to paragraph 33 of Schedule 2B, the relevant date referred to in paragraph 33(2) or (3) (as the case may be) in respect of that application (taking account of paragraph 33(4)).]

F41(3). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

F32Words in s. 6(1)(ba)(i) inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 3 para. 4(5)(a) (with Sch. 5 para. 7(1)(1A), 8) (as amended by S.I. 2020/1637, regs. 1(6), 3, S.I. 2020/1661, regs. 1(2)(b), 12, 16(2), S.I. 2020/1050, regs. 1(2), 10(b) and (26.11.2021) by S.I. 2021/1235, regs. 3, 4); 2020 c. 1, Sch. 5 para. 1(1)

F35Words in s. 6(1)(c) inserted (29.7.1999) by S.I. 1999/1899, reg. 13(1)

F41S. 6(3) omitted (14.1.2019) by virtue of The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 7(3) (with Pt. 5)

Modifications etc. (not altering text)

[F426A Raising of relative grounds in opposition proceedings in case of non-use U.K.

(1)This section applies where—

(a)an application for registration of a trade mark has been published,

(b)there is an earlier trade mark [F43of a kind falling within section 6(1)(a), [F44(aa)] or (ba)] in relation to which the conditions set out in section 5(1), (2) or (3) obtain, and

(c)the registration procedure for the earlier trade mark was completed before the start of the [F45relevant period].

[F46(1A)In this section “the relevant period” means the period of 5 years ending with the date of the application for registration mentioned in subsection (1)(a) or (where applicable) the date of the priority claimed for that application.]

(2)In opposition proceedings, the registrar shall not refuse to register the trade mark by reason of the earlier trade mark unless the use conditions are met.

( 3 )The use conditions are met if—

(a)within the [F47relevant period] the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or services for which it is registered, or

(b)the earlier trade mark has not been so used, but there are proper reasons for non-use.

(4)For these purposes—

(a)use of a trade mark includes use in a form [F48(the “variant form”)] differing in elements which do not alter the distinctive character of the mark in the form in which it was registered [F49(regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)], and

(b)use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes.

F50(5). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

F51(5A). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(6)Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services.

(7)Nothing in this section affects—

(a)the refusal of registration on the grounds mentioned in section 3 (absolute grounds for refusal) or section 5(4)(relative grounds of refusal on the basis of an earlier right), or

(b)the making of an application for a declaration of invalidity under section 47(2) (application on relative grounds where no consent to registration).]

Textual Amendments

F43Words in s. 6A(1)(b) inserted (10.5.2008) by Trade Marks (Earlier Trade Marks) Regulations 2008 (S.I. 2008/1067), regs. 1, art. 4(2) (with reg. 6)

F45Words in s. 6A(1)(c) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 8(2) (with Pt. 5)

F47Words in s. 6A(3)(a) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 8(4) (with Pt. 5)

F48Words in s. 6A(4)(a) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 8(5)(a) (with Pt. 5)

F49Words in s. 6A(4)(a) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 8(5)(b) (with Pt. 5)

Modifications etc. (not altering text)

C2S. 6A applied (with modifications) by SI 1996/714, art. 10C(2) (as substituted (5.5.2004) by Trade Marks (International Registration) (Amendment) Order 2004 (S.I. 2004/948), arts. 1(2), 5 (with art. 8))

7 Raising of relative grounds in case of honest concurrent use.U.K.

(1)This section applies where on an application for the registration of a trade mark it appears to the registrar—

(a)that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or

(b)that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,

but the applicant shows to the satisfaction of the registrar that there has been honest concurrent use of the trade mark for which registration is sought.

(2)In that case the registrar shall not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.

(3)For the purposes of this section “honest concurrent use” means such use in the United Kingdom, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of section 12(2) of the M1Trade Marks Act 1938.

(4)Nothing in this section affects—

(a)the refusal of registration on the grounds mentioned in section 3 (absolute grounds for refusal), or

(b)the making of an application for a declaration of invalidity under section 47(2) (application on relative grounds where no consent to registration).

(5)This section does not apply when there is an order in force under section 8 below.

Marginal Citations

8 Power to require that relative grounds be raised in opposition proceedings.U.K.

(1)The Secretary of State may by order provide that in any case a trade mark shall not be refused registration on a ground mentioned in section 5 (relative grounds for refusal) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark or other earlier right.

(2)The order may make such consequential provision as appears to the Secretary of State appropriate—

(a)with respect to the carrying out by the registrar of searches of earlier trade marks, and

(b)as to the persons by whom an application for a declaration of invalidity may be made on the grounds specified in section 47(2) (relative grounds).

(3)An order making such provision as is mentioned in subsection (2)(a) may direct that so much of section 37 (examination of application) as requires a search to be carried out shall cease to have effect.

(4)An order making such provision as is mentioned in subsection (2)(b) may provide that so much of section 47(3) as provides that any person may make an application for a declaration of invalidity shall have effect subject to the provisions of the order.

(5)An order under this section shall be made by statutory instrument, and no order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.

No such draft of an order making such provision as is mentioned in subsection (1) shall be laid before Parliament until after the end of the period of ten years beginning with the day on which applications for Community trade marks may first be filed in pursuance of [F52Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade mark].

(6)An order under this section may contain such transitional provisions as appear to the Secretary of State to be appropriate.

Textual Amendments

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