SCHEDULE
Article 2
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.
(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.
2. In section 3(4) (absolute grounds for refusal), for “Community law” substitute “EU law”.
3. In section 5(3) (relative grounds for refusal)―
(a) omit paragraph (b) and the word “and” immediately before it;
(b) for “, in the European Community” substitute “or international trade mark (EC), in the European Union”.
4. In section 6(1) (meaning of “earlier trade mark”)―
(a) in paragraph (a), for “or Community trade mark” substitute “, Community trade mark or international trade mark (EC)”;
(b) for paragraph (b) substitute―
“(b)
“(b) a Community 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),
(ba)
(ba) a registered trade mark or international trade mark (UK) which—
(i) has been converted from a Community 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”;
(c) in paragraph (c), after “Paris Convention” insert “or the WTO agreement”.
5. After section 6 insert—
“Raising of relative grounds in opposition proceedings in case of non-use
6A.—(1) This section applies where—
(a)
(a) an application for registration of a trade mark has been published,
(b)
(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)
(c) the registration procedure for the earlier trade mark was completed before the start of the period of five years ending with the date of publication.
(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)
(a) within the period of five years ending with the date of publication of the application 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)
(b) the earlier trade mark has not been so used, but there are proper reasons for non-use.
(4) For these purposes—
(a)
(a) use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and
(b)
(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 Community 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.
(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)
(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)
(b) the making of an application for a declaration of invalidity under section 47(2) (application on relative grounds where no consent to registration).”.
6. In section 10(3) (infringement of registered trade mark)—
(a) after “course of trade” insert “, in relation to goods or services,”;
(b) omit paragraph (b) and the word “and” immediately before it.
7. After section 14(2) (action for infringement) insert—
“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.”.
8. In section 17(3), for “Community” substitute “EU”.
9. In section 18(3) (period after which remedy of delivery up not available), at the end insert―
“(d)
“(d) in the Isle of Man, has the same meaning as in the Limitation Act 1984 (an Act of Tynwald)5.”.
10. In section 19(6) (order as to disposal of infringing goods etc.), for the words from “this section or” onwards substitute—
“(a)
“(a) this section (including that section as applied to Community trade marks by any statutory provision having effect in the Isle of Man);
(b)
(b) section 24D of the Registered Designs Act 19496;
(c)
(c) section 113 of the Copyright Act 1991 (an Act of Tynwald)7;
(d)
(d) section 19 of the Design Right Act 1991 (an Act of Tynwald)8;
(e)
(e) section 26 of the Performers’ Protection Act 1996 (an Act of Tynwald)9; or
(f)
(f) any corresponding statutory provision relating to Community designs and having effect in the Isle of Man.”.
11. In section 25(4) (registration of transactions), for the words from “then unless” onwards substitute—
“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)
(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)
(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.”.
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.”.
13. In section 47 (grounds for invalidity of registration), after subsection (2) insert—
“2A But 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) within the period of five years ending with the date of the application for the declaration 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) 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 differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, 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 Community 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.
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...
