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Trade Marks Act 1994

Status:

This is the original version (as it was originally enacted).

Section 49.

SCHEDULE 1Collective marks

General

1The provisions of this Act apply to collective marks subject to the following provisions.

Signs of which a collective mark may consist

2In relation to a collective mark the reference in section 1(1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

Indication of geographical origin

3(1)Notwithstanding section 3(1)(c), a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.

(2)However, the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).

Mark not to be misleading as to character or significance

4(1)A collective mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a collective mark.

(2)The registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a collective mark.

Notwithstanding section 39(2), an application may be amended so as to comply with any such requirement.

Regulations governing use of collective mark

5(1)An applicant for registration of a collective mark must file with the registrar regulations governing the use of the mark.

(2)The regulations must specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including any sanctions against misuse.

Further requirements with which the regulations have to comply may be imposed by rules.

Approval of regulations by registrar

6(1)A collective mark shall not be registered unless the regulations governing the use of the mark—

(a)comply with paragraph 5(2) and any further requirements imposed by rules, and

(b)are not contrary to public policy or to accepted principles of morality.

(2)Before the end of the prescribed period after the date of the application for registration of a collective mark, the applicant must file the regulations with the registrar and pay the prescribed fee.

If he does not do so, the application shall be deemed to be withdrawn.

7(1)The registrar shall consider whether the requirements mentioned in paragraph 6(1) are met.

(2)If it appears to the registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to file amended regulations.

(3)If the applicant fails to satisfy the registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse the application.

(4)If it appears to the registrar that those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 38 (publication, opposition proceedings and observations).

8The regulations shall be published and notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 6(1).

This is in addition to any other grounds on which the application may be opposed or observations made.

Regulations to be open to inspection

9The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the register.

Amendment of regulations

10(1)An amendment of the regulations governing the use of a registered collective mark is not effective unless and until the amended regulations are filed with the registrar and accepted by him.

(2)Before accepting any amended regulations the registrar may in any case where it appears to him expedient to do so cause them to be published.

(3)If he does so, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 6(1).

Infringement: rights of authorised users

11The following provisions apply in relation to an authorised user of a registered collective mark as in relation to a licensee of a trade mark—

(a)section 10(5) (definition of infringement: unauthorised application of mark to certain material);

(b)section 19(2) (order as to disposal of infringing goods, material or articles: adequacy of other remedies);

(c)section 89 (prohibition of importation of infringing goods, material or articles: request to Commissioners of Customs and Excise).

12(1)The following provisions (which correspond to the provisions of section 30 (general provisions as to rights of licensees in case of infringement)) have effect as regards the rights of an authorised user in relation to infringement of a registered collective mark.

(2)An authorised user is entitled, subject to any agreement to the contrary between him and the proprietor, to call on the proprietor to take infringement proceedings in respect of any matter which affects his interests.

(3)If the proprietor—

(a)refuses to do so, or

(b)fails to do so within two months after being called upon,

the authorised user may bring the proceedings in his own name as if he were the proprietor.

(4)Where infringement proceedings are brought by virtue of this paragraph, the authorised user may not, without the leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant.

This does not affect the granting of interlocutory relief on an application by an authorised user alone.

(5)A proprietor who is added as a defendant as mentioned in sub-paragraph (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.

(6)In infringement proceedings brought by the proprietor of a registered collective mark any loss suffered or likely to be suffered by authorised users shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.

Grounds for revocation of registration

13Apart from the grounds of revocation provided for in section 46, the registration of a collective mark may be revoked on the ground—

(a)that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 4(1), or

(b)that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark, or

(c)that an amendment of the regulations has been made so that the regulations—

(i)no longer comply with paragraph 5(2) and any further conditions imposed by rules, or

(ii)are contrary to public policy or to accepted principles of morality.

Grounds for invalidity of registration

14Apart from the grounds of invalidity provided for in section 47, the registration of a collective mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4(1) or 6(1).

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