Explanatory Note
(This note is not part of the Regulations)
Regulations 4 to 6 implement Article 11(1) and (2) of Directive 89/104/EEC, the First Council Directive to approximate the laws of the Member States relating to trade marks (O.J. L40, 11.2.89, p.1) (“the Directive”).
Regulation 4, which implements Article 11(2) of the Directive in part, inserts a new section 6A into the Trade Marks Act 1994 (“the Act”). This section will require an opponent who bases his opposition to the registration of a trade mark on certain earlier trade marks to show use of those marks.
Regulation 5 makes a consequential amendment to section 40 (registration) of the Act.
Regulation 6, which implements Article 11(1) of the Directive, inserts five new subsections into section 47 of the Act (invalidity). These subsections require an applicant who bases his application for a declaration of invalidity on certain earlier trade marks to show use of those marks.
Davidoff & Cie SA and Zino Davidoff SA v Gofkid Ltd
Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd
not similar
Regulations 8 and 9 are transitional provisions relating to opposition proceedings and applications for a declaration of invalidity.
A Regulatory Impact Assessment is available, copies of which have been placed in the libraries of both Houses of Parliament. Copies of the assessment are also available from the Trade Marks Directorate, The Patent Office, Concept Office, Cardiff Road, Newport, NP10 8QQ.