Trade Marks Act 1994

Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register prior to IP completion day U.K.

[F1 28 (1) This paragraph applies where—

(a) either—

(i) an existing ITM application has been filed with the International Bureau in respect of a trade mark and the date accorded to the international registration of the trade mark pursuant to Article 3(4) is a date prior to IP completion day; or

(ii) an existing request for EU extension in respect of a trade mark has been filed with the International Bureau and the date on which it was recorded in the International Register pursuant to Article 3ter(2) is a date prior to IP completion day;

(b) the person who filed the existing ITM application or (as the case may be) the existing request for EU extension, or a successor in title of that person, applies for registration of the same trade mark under this Act for some or all of the same goods or services, and

(c) the application under this Act is made within a period beginning with IP completion day and ending with the end of the period referred to in sub-paragraph (4).

(2) Where this paragraph applies, the relevant date for the purposes of establishing which rights take precedence is the earliest of—

(a) the date accorded to the international trade mark the subject of the existing ITM application pursuant to Article 3(4) or, in the case of an existing request for EU extension, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);

(b) the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention in respect of the existing ITM application or the existing request for EU extension (as the case may be).

(3) The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1)(b) and made within the period mentioned in sub-paragraph (1)(c) shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in sub-paragraph (2) and the date of the application under this Act.

(4) In sub-paragraph (1)(c), the period referred to is the period of nine months beginning with the day after that on which IP completion day falls.

(5) A right of priority claimed pursuant to Article 4 of the Paris Convention in respect of an existing request for EU extension is to be disregarded for the purposes of sub-paragraph (2)(b) unless the existing request for EU extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the existing request for EU extension was filed.]

Textual Amendments

F1 Sch. 2B inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 4 para. 3 (with Sch. 5 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 22(b)); 2020 c. 1, Sch. 5 para. 1(1)