The Trade Marks (Isle of Man) Order 2013

Article 2

SCHEDULE U.K. Exceptions to and modifications of the Trade Marks Act 1994 in its application to the Isle of Man

1.—(1) Any reference to an Act of Parliament (including the Trade Marks Act 1994) or to a provision of such an Act shall be construed as a reference to that Act or provision as it has effect in the Isle of Man. U.K.

(2) Any reference to an Act of Tynwald shall be construed as a reference to it as amended or replaced by or under any other such enactment.

Commencement Information

I1 Sch. para. 1 in force at 11.11.2013, see art. 1

[F1 1A.   In section 1 (trade marks), for subsection (1) substitute— U.K.

“(1) In this Act “trade mark” means any sign which is capable—

(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and

(b) of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their     packaging.”.]

Textual Amendments

F1 Sch. para. 1A inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 2

[F2 2.— (1) Section 3 (absolute grounds for refusal of registration) is amended as follows. U.K.

(2) In subsection (2), after “the shape” in each place insert “, or another characteristic,”.

(3) In subsection (4)—

(a) for “Community law” substitute “EU law”; and

(b) after “EU law” insert “other than law relating to trade marks”.

(4) After subsection (4), insert—

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

(a) any enactment or rule of law,

(b) any provision of EU law, or

(c) any international agreement to which the United Kingdom or the EU 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 provision of EU law, or

(b) any international agreement to which the EU 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,

(b) provision of EU law, or

(c) international agreement to which the United Kingdom or the EU is a party,

providing for the protection of plant variety rights.”.]

Textual Amendments

F2 Sch. para. 2 substituted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 3

[F3 3.— (1) Section 5 (relative grounds for refusal of registration) is amended as follows. U.K.

(2) In subsection (3)—

(a) omit paragraph (b) and the word “and” immediately before it;

(b) for “Community trade mark” substitute “European Union trade mark”; and

(c) for “, in the European Community” substitute “or international trade mark (EC), in the European Union”.

(3) After subsection (3), insert—

“(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) In subsection (4)(a), for “trade, or” substitute “trade, where the condition in subsection (4A) is met,”.

(5) In subsection (4), after paragraph (a) insert—

“(aa) by virtue of any provision of EU law, or 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”.

(6) In subsection (4)(b)—

(a) after “paragraph (a)” insert “or (aa)”; and

(b) omit “, design right or registered designs” and substitute “or the law relating to industrial property rights”.

(7) After subsection (4), insert—

“(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.”.

(8) After subsection (5) insert—

“(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

F3 Sch. paras. 3, 3A substituted for Sch. para. 3 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 4

[F3 3A.   After section 5 (relative grounds for refusal of registration), insert— U.K.

5A.    “Grounds for refusal relating to only some of the goods or services

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

F3 Sch. paras. 3, 3A substituted for Sch. para. 3 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 4

[F4 4.— (1) Section 6 (meaning of “earlier trade mark”) is amended as follows. U.K.

(2) In subsection (1)—

(a) in paragraph (a), for “or Community trade mark” substitute “, European Union trade mark or international trade mark (EC)”;

(b) for paragraph (b) substitute―

“(b) a European Union trade mark or international trade mark (EC) which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired,

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

(i) has been converted from a European Union trade mark or international trade mark (EC) which itself had a valid claim to seniority within paragraph (b) from an earlier trade mark, and

(ii) accordingly has the same claim to seniority, or;”; and

(c) in paragraph (c), after “Paris Convention” insert “or the WTO agreement”.

(3) Omit subsection (3).]

Textual Amendments

F4 Sch. para. 4 substituted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 5

5.  After section 6 insert— U.K.

“Raising of relative grounds in opposition proceedings in case of non-use

6A.— (1) This section applies where—

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

(b) there is an earlier trade mark of a kind falling within section 6(1)(a), (b) 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 [F5 relevant period].

[F6 (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 [F7 relevant 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 [F8 (the “variant form”)] differing in elements which do not alter the distinctive character of the mark in the form in which it was registered [F9 (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.

(5) In relation to a [F10 European Union trade mark] or international trade mark (EC), any reference in subsection (3) or (4) to the United Kingdom shall be construed as a reference to the European Union.

[F11 (5A) In relation to an international trade mark (EC) the reference in subsection (1)(c) to the completion of the registration procedure is to be construed as a reference to the publication by the European Union Intellectual Property Office of the matters referred to in Article 190(2) of the European Union Trade Mark Regulation.]

(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

F5 Words in Sch. para. 5 substituted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 6(2)(a)

F6 Words in Sch. para. 5 inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 6(2)(b)

F7 Words in Sch. para. 5 substituted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 6(2)(c)

F8 Words in Sch. para. 5 inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 6(2)(d)(i)

F9 Words in Sch. para. 5 inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 6(2)(d)(ii)

F10 Words in Sch. para. 5 substituted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 6(2)(e)

F11 Words in Sch. para. 5 inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 6(2)(f)

Commencement Information

I2 Sch. para. 5 in force at 11.11.2013, see art. 1

[F12 5A.   In section 8(5) (power to require that relative grounds be raised in opposition proceedings), for “the Community Trade Mark Regulation” substitute “Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade mark. U.K.

Textual Amendments

F12 Sch. paras. 5A, 5B inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 7

5B.— (1) Section 9 (rights conferred by registered trade mark) is amended as follows. U.K.

(2) In subsection (1) before “section 10” insert “subsections (1) to (3) of”.

(3) After subsection (1) insert—

“(1A) See subsection (3B) of section 10 for provision about certain other acts amounting to infringement of a registered trade mark.

(1B) Subsection (1) is without prejudice to the rights of proprietors acquired before the date of filing of the application for registration or (where applicable) the date of the priority claimed in respect of that application.”.

(4) In subsection (2)—

(a) omit “such”, and

(b) at the end insert “such as is mentioned in subsection (1) or (1A)”.]

Textual Amendments

F12 Sch. paras. 5A, 5B inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 7

[F13 6.— (1) Section 10 (infringement of registered trade mark) is amended as follows. U.K.

(2) In subsection (3)—

(a) after “course of trade” insert “, in relation to goods or services,”; and

(b) omit paragraph (b) and the word “and” immediately before it.

(3) After subsection (3) insert—

“(3A) Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered.

(3B) Where the risk exists that the packaging, labels, tags, security or authenticity features or devices, or any other means to which the trade mark is affixed could be used in relation to goods or services and that use would constitute an infringement of the rights of the proprietor of the trade mark, a person infringes a registered trade mark if the person carries out in the course of trade any of the following acts—

(a) affixing a sign identical with, or similar to, the trade mark on packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark may be affixed; or

(b) offering or placing on the market, or stocking for those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark is affixed.”.

(4) In subsection (4)(c), after “under the sign;” omit “or”.

(5) After subsection (4)(c), insert—

“(ca) uses the sign as a trade or company name or part of a trade or company name;”.

(6) In subsection (4)(d)—

(a) for “or” substitute “and”; and

(b) after “advertising” insert “; or”.

(7) Omit subsections (5) and (6).]

Textual Amendments

F13 Sch. paras. 6-6C substituted for Sch. para. 6 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 8

[F13 6A.   After section 10, insert— U.K.

10A.    “Right to prevent goods entering the UK without being released for free circulation

(1) The proprietor of a registered trade mark is entitled to prevent third parties from bringing goods into the United Kingdom in the course of trade without being released for free circulation if they are goods for which the trade mark is registered which—

(a) come from outside the customs territory of the EU; and

(b) bear without authorisation a sign which is identical with the trade mark or cannot be distinguished in its essential aspects from the trade mark.

(2) In subsection (1) the reference to goods for which the trade mark is registered includes a reference to the packaging of goods for which the trade mark is registered.

(3) Subsection (1) is without prejudice to the rights of proprietors acquired before the date of application for registration of the trade mark, or (where applicable) the date of the priority claimed in respect of that application.

(4) The entitlement of the proprietor under subsection (1) is to lapse if—

(a) proceedings are initiated in accordance with the European Customs Enforcement Regulation to determine whether the trade mark has been infringed; and

(b) during those proceedings evidence is provided by the declarant or the holder of the goods that the proprietor of the trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.

(5) References in this Act to the “European Customs Enforcement Regulation” are references to Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights.

10B.    Prohibition on the use of a trade mark registered in the name of an agent or representative

(1) Subsection (2) applies where a trade mark is registered in the name of an agent or representative of a person (“P”) who is the proprietor of the trade mark, without P’s consent.

(2) Unless the agent or representative justifies the action mentioned in subsection (1), P may do either or both of the following—

(a) prevent the use of the trade mark by the agent or representative (notwithstanding the rights conferred by this Act in relation to a registered trade mark);

(b) apply for the rectification of the register so as to substitute P’s name as the proprietor of the registered trade mark.”.]

Textual Amendments

F13 Sch. paras. 6-6C substituted for Sch. para. 6 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 8

[F13 6B.— (1) Section 11 (limits on effect of registered trade mark) is amended as follows. U.K.

(2) In subsection (1) omit “another registered trade mark in relation to goods and services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration))” and substitute “a later registered trade mark where that later registered trade mark would not be declared invalid pursuant to section 47(2A) or (2G) or section 48(1)”.

(3) After subsection (1) insert—

“(1A) A registered trade mark is not infringed by the use of a later registered European Union trade mark where that later European Union trade mark would not be declared invalid as a result of Article 60(1), (3), (4), 61(1), (2) or 64(2) of the European Union Trade Mark Regulation.

(1B) Where subsection (1) or (1A) applies, the later registered trade mark is not infringed by the use of the earlier trade mark even though the earlier trade mark may no longer be invoked against the later registered trade mark.”.

(4) In subsection (2)(a) for “a person” substitute “an individual”.

(5) In subsection (2)(b) for “indications concerning” substitute “signs or indications which are not distinctive or which concern”.

(6) In subsection (2)(c) for “where it” substitute “for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular where that use”.]

Textual Amendments

F13 Sch. paras. 6-6C substituted for Sch. para. 6 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 8

[F13 6C.   After section 11, insert— U.K.

11A.    “Non-use as defence in infringement proceedings

(1) The proprietor of a trade mark is entitled to prohibit the use of a sign only to the extent that the registration of the trade mark is not liable to be revoked pursuant to section 46(1)(a) or (b) (revocation on basis of non-use) at the date the action for infringement is brought.

(2) Subsection (3) applies in relation to an action for infringement of a registered trade mark where the registration procedure for the trade mark was completed before the start of the period of five years ending with the date the action is brought.

(3) If the defendant so requests, the proprietor of the trade mark must furnish proof—

(a) that during the five-year period preceding the date the action for infringement is brought, the trade mark has been put to genuine use in the United Kingdom by or with the consent of the proprietor in relation to the goods and services for which it is registered and which are cited as justification for the action, or

(b) that there are proper reasons for non-use.

(4) Nothing in subsections (2) and (3) overrides any provision of section 46, as applied by subsection (1) (including the words from “Provided that” to the end of subsection (3)).”.]

Textual Amendments

F13 Sch. paras. 6-6C substituted for Sch. para. 6 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 8

7.  After section 14(2) (action for infringement) insert— U.K.

“(2A) Where in an action for infringement of a registered trade mark it is shown that the defendant knew, or had reason to believe, that he was committing an infringement, the damages awarded to the claimant shall be appropriate to the actual prejudice he suffered as a result of the infringement.

(2B) The court—

(a) in awarding such damages shall take into account all appropriate aspects, including in particular—

(i) the negative economic consequences, including any lost profits, which the claimant has suffered;

(ii) any unfair profits made by the defendant; and

(iii) elements other than economic factors, including the moral prejudice caused to the claimant by the infringement; or

(b) may where appropriate award such damages on the basis of the royalties or fees which would have been due had the defendant obtained a licence.”.

Commencement Information

I3 Sch. para. 7 in force at 11.11.2013, see art. 1

8.  In section 17(3), for “Community” substitute “EU”. U.K.

Commencement Information

I4 Sch. para. 8 in force at 11.11.2013, see art. 1

9.  In section 18(3) (period after which remedy of delivery up not available), at the end insert― U.K.

“(d) in the Isle of Man, has the same meaning as in the Limitation Act 1984 (an Act of Tynwald)(1).”.

Commencement Information

I5 Sch. para. 9 in force at 11.11.2013, see art. 1

10.  In section 19(6) (order as to disposal of infringing goods etc.), for the words from “this section or” onwards substitute— U.K.

“(a) this section (including that section as applied to Community trade marks by any statutory provision having effect in the Isle of Man);

(b) section 24D of the Registered Designs Act 1949(2);

(c) section 113 of the Copyright Act 1991 (an Act of Tynwald)(3);

(d) section 19 of the Design Right Act 1991 (an Act of Tynwald)(4);

(e) section 26 of the Performers’ Protection Act 1996 (an Act of Tynwald)(5); or

(f) any corresponding statutory provision relating to Community designs and having effect in the Isle of Man.”.

Commencement Information

I6 Sch. para. 10 in force at 11.11.2013, see art. 1

[F14 10A.— (1) Section 24 (assignment, &c of registered trade mark) is amended as follows. U.K.

(2) After subsection (1) insert—

“(1A) A contractual obligation to transfer a business is to be taken to include an obligation to transfer any registered trade mark, except where there is agreement to the contrary or it is clear in all the circumstances that this presumption should not apply.”.]

Textual Amendments

F14 Sch. para. 10A inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 9

11.  In section 25(4) (registration of transactions), for the words from “then unless” onwards substitute— U.K.

“and the mark is infringed before the prescribed particulars of the transaction are registered, in proceedings for such an infringement, the court shall not award him costs unless—

(a) an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning with its date, or

(b) the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter.”.

Commencement Information

I7 Sch. para. 11 in force at 11.11.2013, see art. 1

[F15 11A.— (1) Section 27 (application for registration of trade mark as an object of property) is amended as follows. U.K.

(2) In subsection (1) after “sections 22 to 26 (which relate to a registered trade mark as an object of property)” insert “and sections 28 to 31 (which relate to licensing)”.

Textual Amendments

F15 Sch. paras. 11A-11E inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 10

11B.— (1) Section 28 (licensing of registered trade mark) is amended as follows. U.K.

(2) After subsection (4) insert—

“(5) The proprietor of a registered trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in the licence with regard to—

(a) its duration,

(b) the form covered by the registration in which the trade mark may be used,

(c) the scope of the goods or services for which the licence is granted,

(d) the territory in which the trade mark may be affixed, or

(e) the quality of the goods manufactured or of the services provided by the licensee.”.

Textual Amendments

F15 Sch. paras. 11A-11E inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 10

11C.— (1) Section 30 is amended as follows. U.K.

(2) After subsection (1) insert—

“(1A) Except so far as the licence provides otherwise a licensee may only bring proceedings for infringement of the registered trade mark with the consent of the proprietor (but see subsections (2) and (3)).”.

(3) In subsection (2), for “A licensee is entitled, unless his licence or any licence through which his interest is derived, provides otherwise, to” substitute “An exclusive licensee may”.

(4) In subsection (3) after “If the proprietor” insert “mentioned in subsection (2)” and before “licensee” insert “exclusive”.

(5) In subsection (4), after “by virtue of this section” insert “or with the consent of the proprietor or pursuant to the licence”.

(6) After subsection (6), insert—

“(6A) Where the proprietor of a registered trade mark brings infringement proceedings, a licensee who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.”.

Textual Amendments

F15 Sch. paras. 11A-11E inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 10

11D.— (1) Section 32 (application for registration) is amended as follows. U.K.

(2) In subsection (2)(d) after “mark” insert “, which is capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor”.

Textual Amendments

F15 Sch. paras. 11A-11E inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 10

11E.   Section 38 (publication, opposition proceedings and observations) is amended as follows. U.K.

(2) After subsection (2) insert—

“(2A) Where a notice of opposition is filed on the basis of one or more earlier trade marks or other earlier rights—

(a) the rights (if plural) must all belong to the same proprietor;

(b) the notice may be filed on the basis of part, or the totality, of the goods or services in respect of which the earlier right is protected or applied for.

(2B) A notice of opposition may be directed against part or the totality of the goods or services in respect of which the contested mark is applied for.”.]

Textual Amendments

F15 Sch. paras. 11A-11E inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 10

12.  In section 40 (registration), in subsection (1), for the words from “since he accepted” onwards substitute “since the application was accepted that the registration requirements (other than those mentioned in section 5(1), (2) or (3)) were not met at that time.”. U.K.

Commencement Information

I8 Sch. para. 12 in force at 11.11.2013, see art. 1

[F16 12A.— (1) Section 41 (registration: supplementary provisions) is amended as follows. U.K.

(2) After subsection (1)(a) insert—

“(aa) the division of a registration of a trade mark into several registrations;”.

(3) In subsection (3)(b), after each reference to “application” insert “or registration” and after “applications” insert “or registrations”.

Textual Amendments

F16 Sch. paras. 12A-12C inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 11

12B.— (1) Section 43 (renewal of registration) is amended as follows. U.K.

(2) After subsection (3) insert—

“(3A) If a request for renewal is made or the renewal fee is paid in respect of only some of the goods or services for which the trade mark is registered, the registration is to be renewed for those goods or services only.”.

Textual Amendments

F16 Sch. paras. 12A-12C inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 11

12C.— (1) Section 46 (revocation of registration) is amended as follows. U.K.

(2) In subsection (2)—

(a) after “a form” insert “(the “variant form”)”; and

(b) after “in which it was registered” insert “(regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)”.]

Textual Amendments

F16 Sch. paras. 12A-12C inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 11

[F17 13.— (1) Section 47 (grounds for invalidity of registration) is amended as follows. U.K.

(2) At the beginning of subsection (2) insert “Subject to subsections (2A) and (2G),”.

(3) After subsection (2) insert—

“(2ZA) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 5(6).

(2A) The registration of a trade mark may not be declared invalid on the ground that there is an earlier trade mark unless—

(a) the registration procedure for the earlier trade mark was completed within the period of five years ending with the date of the application for the declaration,

(b) the registration procedure for the earlier trade mark was not completed before that date,

(c) the use conditions are met.

(2B) The use conditions are met if—

(a) the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with their consent in relation to the goods or services for which it is registered—

(i) within the period of 5 years ending with the date of application for the declaration, and

(ii) within the period of 5 years ending with the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application where, at that date, the five year period within which the earlier trade mark should have been put to genuine use as provided in section 46(1)(a) has expired, or

(b) it has not been so used, but there are proper reasons for non-use.

(2C) For these purposes—

(a) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (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.

(2D) In relation to a European Union trade mark or international trade mark (EC), any reference in subsection (2B) or (2C) to the United Kingdom shall be construed as a reference to the European Union.

(2DA) In relation to an international trade mark (EC), the reference in subsection (2A)(a) to the completion of the registration procedure is to be construed as a reference to the publication by the European Union Intellectual Property Office of the matters referred to in Article 190(2) of the European Union Trade Mark Regulation.

(2E) 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.

(2F) Subsection (2A) does not apply where the earlier trade mark is a trade mark within section 6(1)(c).

(2G) An application for a declaration of invalidity on the basis of an earlier trade mark must be refused if it would have been refused, for any of the reasons set out in subsection (2H), had the application for the declaration been made on the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application.

(2H) The reasons referred to in subsection (2G) are—

(a) that on the date in question the earlier trade mark was liable to be declared invalid by virtue of section 3(1)(b), (c) or (d), (and had not yet acquired a distinctive character as mentioned in the words after paragraph (d) in section 3(1));

(b) that the application for a declaration of invalidity is based on section 5(2) and the earlier trade mark had not yet become sufficiently distinctive to support a finding of likelihood of confusion within the meaning of section 5(2);

(c) that the application for a declaration of invalidity is based on section 5(3)(a) and the earlier trade mark had not yet acquired a reputation within the meaning of section 5(3).”.

(4) After subsection (5) insert—

“(5A) An application for a declaration of invalidity may be filed on the basis of one or more earlier trade marks or other earlier rights provided they all belong to the same proprietor.”.]

Textual Amendments

F17 Sch. paras. 13-13D substituted for Sch. para. 13 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 12

[F17 13A.— (1) Section 49 (collective marks) is amended as follows. U.K.

(2) For subsection (1) substitute—

“(1) A collective mark is a mark which is described as such when it is applied for and is capable of distinguishing the goods and services of members of the association which is the proprietor of the mark from those of other undertakings.

(1A) The following may be registered as the proprietor of a collective mark—

(a) an association of manufacturers, producers, suppliers of services or traders which has the capacity in its own name to enter into contracts and to sue or be sued; and

(b) a legal person governed by public law.”.]

Textual Amendments

F17 Sch. paras. 13-13D substituted for Sch. para. 13 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 12

[F17 13B.— (1) Section 50 (certification marks) is amended as follows. U.K.

(2) In subsection (1) for “indicating” substitute “which is described as such when the mark is applied for and indicates”.]

Textual Amendments

F17 Sch. paras. 13-13D substituted for Sch. para. 13 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 12

[F17 13C.   In the heading of Part II and in the italic heading before section 51, for “Community” substitute “European Union”.] U.K.

Textual Amendments

F17 Sch. paras. 13-13D substituted for Sch. para. 13 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 12

[F17 13D.   For section 51 (meaning of “Community trade mark”) substitute— U.K.

51.    “Meaning of “European Union trade mark”

In this Act—

“European Union trade mark” has the meaning given by Article 1(1) of the European Union Trade Mark Regulation; and

“the European Union Trade Mark Regulation” means Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark(1).”.]

Textual Amendments

F17 Sch. paras. 13-13D substituted for Sch. para. 13 (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 12

14.  Omit section 52 (power to make provision in connection with Community Trade Mark Regulation). U.K.

Commencement Information

I9 Sch. para. 14 in force at 11.11.2013, see art. 1

15.  In section 53 (the Madrid Protocol), at the appropriate place insert― U.K.

““international trade mark (EC)” means a trade mark which is entitled to protection in the European Union under that Protocol;”.

Commencement Information

I10 Sch. para. 15 in force at 11.11.2013, see art. 1

16.  In section 55(1) (the Paris Convention)― U.K.

(a) in paragraph (a), at the end omit “and”;

(b) after paragraph (a) insert—

“(aa) “the WTO agreement” means the Agreement establishing the World Trade Organisation signed at Marrakesh on 15th April 1994, and”;

(c) in paragraph (b), at the end insert “or to that Agreement”.

(2) In section 55(2), after “Paris Convention” insert “or the WTO agreement”.

Commencement Information

I11 Sch. para. 16 in force at 11.11.2013, see art. 1

17.  In sections 56(1) and (2) (protection of well-known trade marks), 57(2) and (3) (national emblems etc. of Convention countries) and 58(2) (emblems etc. of certain international organisations), after “Paris Convention” insert “or the WTO agreement”. U.K.

Commencement Information

I12 Sch. para. 17 in force at 11.11.2013, see art. 1

18.  In section 59 (notification under Article 6ter of the Convention), at the end insert― U.K.

“(5) Any reference in this section to Article 6ter of the Paris Convention shall be construed as including a reference to that Article as applied by the WTO agreement.”.

Commencement Information

I13 Sch. para. 18 in force at 11.11.2013, see art. 1

[F18 18A.   Omit section 60 (acts of agent or representative: Article 6septies). U.K.

Textual Amendments

F18 Sch. paras. 18A, 18B inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 13

18B.   At the end of Part 2 insert— U.K.

“Nice Classification U.K.

60A.    Similarity of goods and services

(1) For the purposes of this Act goods and services—

(a) are not to be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification;

(b) are not to be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.

(2) In subsection (1), the “Nice Classification” means the system of classification under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, which was last amended on 28 September 1979(2).”.]

Textual Amendments

F18 Sch. paras. 18A, 18B inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 13

19.  Omit section 61 (stamp duty). U.K.

Commencement Information

I14 Sch. para. 19 in force at 11.11.2013, see art. 1

20.  In section 68(2) (costs and security for costs), at the end insert― U.K.

“(c) in the Isle of Man, in the same way as an order of the court.”.

Commencement Information

I15 Sch. para. 20 in force at 11.11.2013, see art. 1

21.  In section 75 (the court)― U.K.

(a) in paragraph (a), at the end omit “and”;

(b) after paragraph (b) insert—

“and

(c) in the Isle of Man, the High Court of Justice of the Isle of Man.”.

Commencement Information

I16 Sch. para. 21 in force at 11.11.2013, see art. 1

[F19 22.— (1) Section 77 (persons appointed to hear appeals) is amended as follows. U.K.

(2) In subsection (2)—

(a) for paragraph (a) substitute—

“(a) he satisfies the judicial-appointment eligibility condition on a 5-year basis;”;

(b) after paragraph (b) insert—

“(ba) he is an advocate in the Isle of Man of at least 5 years’ standing;”; and

(c) in paragraphs (b) and (c), for “7” substitute “5”.

(3) In subsection (4) for “Lord Advocate” substitute “Secretary of State”.]

Textual Amendments

F19 Sch. para. 22 substituted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 14

23.  In section 83A(7)(6) (regulation of trade mark attorneys), in paragraph (a) of the definition of “trade mark agency work”, after “United Kingdom” insert “or elsewhere”. U.K.

Commencement Information

I17 Sch. para. 23 in force at 11.11.2013, see art. 1

24.  In section 86(2) (use of the term “trade mark attorney”), after “1980” insert “, section 1 of the Legal Practitioners Registration Act 1986 (an Act of Tynwald)(7)”. U.K.

Commencement Information

I18 Sch. para. 24 in force at 11.11.2013, see art. 1

25.  In section 87(2)(8) (privilege for communications), for “solicitor” substitute “advocate”. U.K.

Commencement Information

I19 Sch. para. 25 in force at 11.11.2013, see art. 1

[F20 25A.— (1) Section 88 (power of registrar to refuse to deal with certain agents) is amended as follows. U.K.

(2) In subsection (1)(b) for “an individual” substitute “a person”.

(3) In subsection (1)(c) for—

(a) “an individual” substitute “a person”;

(b) “him” substitute “the person”; and

(c) “his” substitute “the person’s”.]

Textual Amendments

F20 Sch. para. 25A inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 15

26.—(1) In section 89(1) (infringing goods etc. may be treated as prohibited goods)― U.K.

(a) for “Commissioners of Customs and Excise” substitute “Treasury”;

(b) in paragraph (b), for “United Kingdom” substitute “Isle of Man”;

(c) in paragraph (c), for “Commissioners” substitute “Treasury”.

(2) For section 89(3) substitute―

“(3) This section does not apply to goods placed in, or expected to be placed in, one of the situations referred to in [F21 Article 3 of the European Customs Enforcement Regulation].

(4) In this section and sections 90 and 91, “the Treasury” means the Department of that name established under the Government Departments Act 1987 (an Act of Tynwald)(9).”.

Textual Amendments

F21 Words in Sch. para. 26(2) substituted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 16

Commencement Information

I20 Sch. para. 26 in force at 11.11.2013, see art. 1

27.—(1) In the side note to section 90 (powers of Commissioners to make regulations) and in section 90(1), (2) and (3), for “Commissioners of Customs and Excise” and “Commissioners” (in each place) substitute “Treasury”. U.K.

(2) For section 90(4) substitute―

“(4) Regulations under this section shall not have effect unless they are approved by Tynwald.”.

Commencement Information

I21 Sch. para. 27 in force at 11.11.2013, see art. 1

28.  In section 91(10) (power of Commissioners to disclose information)― U.K.

(a) in the side note, for “Commissioners for Revenue and Customs” substitute “Treasury”;

(b) for “Commissioners for Her Majesty’s Revenue and Customs” substitute “Treasury”;

(c) for “functions of Her Majesty’s Revenue and Customs” substitute “its functions”;

(d) for “Commissioners may authorise” substitute “Treasury may authorise”;

(e) for “Trade Descriptions Act 1968” substitute “Consumer Protection (Trade Descriptions) Act 1970 (an Act of Tynwald)(11)”.

Commencement Information

I22 Sch. para. 28 in force at 11.11.2013, see art. 1

29.  In section 92(6) (unauthorised use of trade mark, &c in relation to goods)— U.K.

(a) for “imprisonment” (in each place) substitute “custody”;

(b) in paragraph (a), for “the statutory maximum” substitute “the prescribed sum within the meaning of section 32 of the Magistrates’ Courts Act 1980(12)”;

(c) in paragraph (b), for “indictment” substitute “information”.

Commencement Information

I23 Sch. para. 29 in force at 11.11.2013, see art. 1

30.—(1) After section 92A(2)(13) insert― U.K.

“(2A) The power conferred by subsection (1) does not, in the Isle of Man, extend to authorising a search for material of the kinds mentioned in section 10(2) of the Police Powers and Procedures Act 1988 (an Act of Tynwald)(14) (certain classes of personal or confidential material).”.

(2) In section 92A(3)(b), for “28 days” substitute “3 months”.

Commencement Information

I24 Sch. para. 30 in force at 11.11.2013, see art. 1

31.  Omit section 93 (enforcement function of local weights and measures authority). U.K.

Commencement Information

I25 Sch. para. 31 in force at 11.11.2013, see art. 1

32.  In section 94(3) (falsification of register)— U.K.

(a) for “imprisonment” (in each place) substitute “custody”;

(b) in paragraph (a), for “indictment” substitute “information”;

(c) in paragraph (b), for “the statutory maximum” substitute “the prescribed sum within the meaning of section 32 of the Magistrates’ Courts Act 1980”.

Commencement Information

I26 Sch. para. 32 in force at 11.11.2013, see art. 1

33.—(1) In section 97 (forfeiture: England and Wales or Northern Ireland), in the side note and subsection (1), for “or Northern Ireland” substitute “, Northern Ireland or the Isle of Man”. U.K.

(2) In section 97(2)(b), after “magistrates’ court” insert “or, in the Isle of Man, a court of summary jurisdiction”.

(3) In section 97(5)―

(a) after “magistrates’ court” insert “or, in the Isle of Man, a court of summary jurisdiction,”;

(b) after paragraph (b) insert—

“(c) in the Isle of Man, to the court;”;

(c) after “1981” insert “or section 109 of the Summary Jurisdiction Act 1989 (an Act of Tynwald)(15)”.

(4) In section 97(8), for “Trade Descriptions Act 1968” substitute “Consumer Protection (Trade Descriptions) Act 1970 (an Act of Tynwald)”.

Commencement Information

I27 Sch. para. 33 in force at 11.11.2013, see art. 1

[F22 33A.   After section 99 (unauthorised use of Royal arms, &c.), insert— U.K.

99A.    “Reproduction of trade marks in dictionaries, encyclopaedias etc.

(1) Subsection (2) applies if the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference work, in print or electronic form, gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered.

(2) The publisher of the work must, at the request in writing of the proprietor of the trade mark, ensure that the reproduction of the trade mark is accompanied by an indication that it is a registered trade mark.

(3) The action required by subsection (2) must be taken—

(a) without delay, and

(b) in the case of works in printed form, at the latest in the next edition of the publication.

(4) If the publisher fails to take any action required by subsection (2) the court may, on an application by the proprietor—

(a) order the publisher to take the action concerned;

(b) if the work is in printed form, order the publisher to erase or amend the reproduction of the trade mark or secure the destruction of copies of the work in the publisher’s possession, custody or control; or

(c) grant such other order as the court in the circumstances considers appropriate.”.]

Textual Amendments

F22 Sch. para. 33A inserted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 17

34.  In section 101(2)(b) (offences committed by partnerships and bodies corporate)― U.K.

(a) for “or Northern Ireland” substitute “, Northern Ireland or the Isle of Man”;

(b) after “1981” insert “or section 32 of the Summary Jurisdiction Act 1989 (an Act of Tynwald)”.

Commencement Information

I28 Sch. para. 34 in force at 11.11.2013, see art. 1

35.  In section 103(3) (minor definitions) for “a Community instrument” substitute “an EU instrument”. U.K.

Commencement Information

I29 Sch. para. 35 in force at 11.11.2013, see art. 1

[F23 36.— (1) Section 104 (index of defined expressions) is amended at follows. U.K.

(2) Omit the entries in the table for “Community trade mark” and “Community Trade Mark Regulation”.

(3) After the entry in the table for “earlier trade mark” insert—

“European Customs Enforcement Regulation	section 10A
European Union trade mark	section 51
European Union Trade Mark Regulation	section 51”.]

Textual Amendments

F23 Sch. para. 36 substituted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 18

37.—(1) Omit section 106 (consequential amendments and repeals) and Schedules 4 and 5. U.K.

(2) Sub-paragraph (1), and the revocation (by article 3) of the Trade Marks Act 1994 (Isle of Man) Order 1996, do not affect any amendment or repeal effected by section 106 and Schedules 4 and 5 before the coming into operation of this Order.

Commencement Information

I30 Sch. para. 37 in force at 11.11.2013, see art. 1

[F24 38.— (1) Schedule 1 (collective marks) is amended as follows. U.K.

(2) In paragraph 5—

(a) in sub-paragraph (2) omit “, where they exist,”;

(b) the second sentence of sub-paragraph (2) is renumbered as sub-paragraph (4), and

(c) before sub-paragraph (4) insert—

“(3) Where the regulations govern use of a mark referred to in paragraph 3(1), they must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark, provided that the person fulfils all the other conditions of the regulations.”.

(3) In paragraph 6(1)(a) after “paragraph 5(2)” insert “and (3)”.

(4) In paragraph 11(c) for “Commissioners of Customs and Excise” substitute “the Treasury”.

(5) In paragraph 12—

(a) for sub-paragraph (2), substitute—

“(2) Subject to any agreement to the contrary between the authorised user and the proprietor, an authorised user may only bring proceedings for infringement of a registered collective mark with the consent of the proprietor.”;

(b) omit sub-paragraph (3);

(c) in sub-paragraph (4), omit “Where infringement proceedings are brought by virtue of this paragraph” and substitute “Where proceedings are brought by an authorised user for infringement of a registered collective mark (with the consent of the proprietor or pursuant to any agreement referred to in sub-paragraph (2))”;

(d) after sub-paragraph (6), insert—

“(7) Where the proprietor of a registered collective mark brings infringement proceedings, an authorised user who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.”.

(6) In paragraph 13—

(a) in sub-paragraph (a), for “proprietor” substitute “persons authorised to use it”;

(b) in sub-paragraph (b)—

(i) for “has failed to observe, or to secure the observance of,” substitute “has not taken reasonable steps to prevent the mark being used in a manner that is incompatible with the conditions of use laid down in”; and

(ii) after “mark” insert “(as amended from time to time)”;

(c) in sub-paragraph (c)(i), after “paragraph 5(2)” insert “and (3)”.

(7) In paragraph 14—

(a) for “may” substitute “shall”;

(b) after “the provisions of” insert “section 49(1A) (definition of who may be registered as the proprietor of a certification mark) or”;

(c) after “6(1)” insert “unless the breach was only of paragraph 6(1) and the proprietor of the mark, by amending the regulations governing use, complies with the requirements of paragraph 6(1).]

Textual Amendments

F24 Sch. para. 38 substituted (14.1.2019) by The Trade Marks (Isle of Man) (Amendment) Order 2018 (S.I. 2018/1157), art. 1, Sch. para. 19

39.  In Schedule 2, in paragraph 13(c) for “Commissioners of Customs and Excise” substitute “the Treasury”. U.K.

Commencement Information

I31 Sch. para. 39 in force at 11.11.2013, see art. 1

(1)

1984 c.18 (Isle of Man).

(2)

1949 c.88. Section 24D is inserted in the Registered Designs Act 1949, as that Act has effect in the Isle of Man, by the Registered Designs (Isle of Man) Order 2013 (S.I. 2013/1234) Schedule 1 paragraph 28.

(3)

1991 c.8 (Isle of Man).

(4)

1991 c.9 (Isle of Man).

(5)

1996 c.12 (Isle of Man).

(6)

Section 83A was inserted by section 184(1) and (3) of the Legal Services Act 2007(c.29) and amended by article 2 of S.I. 2009/3339.

(7)

1986 c.15 (Isle of Man).

(8)

Section 87(2) was inserted by section 208(1) of and paragraphs 109 and 113 to Schedule 21 to the Legal Services Act 2007 (c.29).

(9)

1987 c.13 (Isle of Man).

(10)

Section 91 was amended by section 50(6) of and paragraph 58 of Schedule 4 to the Commissioners for Revenue and Customs Act 2005 (c.11).

(11)

1970 c.2 (Isle of Man).

(12)

1980 c.43.

(13)

Section 92A was inserted by section 6 of the.Copyright, etc. and Trade Marks (Offences and Enforcement) Act 2002 (c.25).

(14)

1998 c.9 (Isle of Man).

(15)

1989 c.15 (Isle of Man).