The Trade Marks Regulations 2018
| Jurisdiction | UK Non-devolved |
| Citation | SI 2018/825 |
| Year | 2018 |
(1) These Regulations may be cited as the Trade Marks Regulations 2018 and come into force on 14th January 2019.(2) In these Regulations—
The 1994 Act is amended in accordance with regulations 3 to 33. In section 1, for subsection (1) substitute— 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, andof distinguishing goods or services of one undertaking from those of other undertakings.(1) Section 3 is amended as follows.(2) In subsection (2) , after “the shape” in each place insert “ , or another characteristic, ” .(3) In subsection (4) (4) After subsection (4) , insert—“ trade, where the condition in subsection (4A) is met, ” .(4) In subsection (4) , after paragraph (a) insert—“ or (aa) ” ; andomit “, design right or registered designs” and substitute “ or the law relating to industrial property rights ” .(6) After subsection (4) , insert—After section 5 insert— 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.(1) Section 6 (2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .(3) Omit subsection (3) .(1) Section 6A (2) In subsection (1) (c) , for the words from “period” to the end substitute “ relevant period ” .(3) After subsection (1) insert—“ relevant period ” .after “a form” insert “ (the “variant form”) ” ;after “registered” insert “ (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor) ” .(6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .(1) Section 9 is amended as follows.(2) In subsection (1) before “section 10” insert “ subsections (1) to (3) of ” .(3) After subsection (1) insert—
- “the 1994 Act” means the Trade Marks Act 1994;
- “the CTM Regulations” means the Community Trade Mark Regulations 2006 ;
- “the International Registration Order” means the Trade Marks (International Registration) Order 2008 ;
- “the Rules” means the Trade Marks Rules 2008 .
- “(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.
- “(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.
- “(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.
- (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
- “(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.
- “(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.
- “(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.
- “(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.
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