Trade Marks (Amendment) Act 1937
| Jurisdiction | UK Non-devolved |
| Citation | 1937 c. 49 |
| Year | 1937 |
Trade Marks (Amendment) Act, 1937
(1 Edw. 8 & 1 Geo. 6.) CHAPTER 49.
An Act to amend the law relating to trade marks.
[13th July 1937]
B E it enacted by the King's most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:—
Amendments of Trade Marks Law.
1 Definition of trade mark.
(1) In section three of the Trade Marks Act, 1905 (in this Act referred to as ‘the principal Act’), the following definition shall be substituted for the definition of a trade mark:—
‘A 'trade mark' shall mean, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and shall mean, in relation to a certification trade mark, a mark registered, or deemed to have been registered, under section eighteen of the Trade Marks (Amendment) Act, 1937.’
(2) References in the Trade Marks Acts to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references therein to the use of a mark in relation to goods, or for goods, shall be construed as references to the use thereof upon, or in physical or other relation to, goods.
2 Registrability in Part A of the register.
(1) In section nine of the principal Act (which specifies the essential particulars required in a trade mark for it to be registrable in Part A of the register) for the words ‘A registrable trade mark must contain or consist of at least one of the following essential particulars’ there shall be substituted the words ‘In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register it must contain or consist of at least one of the following essential particulars’.
(2) In the said section nine, for the words from ‘For the purposes of this section’ to the end of the section there shall be substituted the following words:—
‘For the purposes of this section 'distinctive' shall mean adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which—
(a ) the trade mark is inherently adapted to distinguish as aforesaid; and
(b ) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid.’
3 Registrability in Part B of the register and provisions as to registrations therein.
(1) In order for a trade mark to be registrable in Part B of the register, it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
In determining whether a trade mark is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which—
(a ) the trade mark is inherently capable of distinguishing as aforesaid; and
(b ) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid.
(2) The provisions of subsection (1) of section forty-one of the principal Act (being provisions relating to the conclusiveness of the original registration of a trade mark after the expiration of seven years from the date thereof) shall not apply to registrations in Part B of the register.
Subject as aforesaid, the provisions of the Trade Marks Acts, other than provisions whose operation is limited by the terms thereof to registration in Part A of the register, shall have effect in relation to the registration of trade marks in Part B of the register and to trade marks registered therein as they have effect in relation to the registration of trade marks in Part A of the register and to trade marks registered therein.
(3) The foregoing provisions of this section shall have effect in substitution for the provisions of subsections (1) to (5) of section two, and of section three, of the Trade Marks Act, 1919 , and of the First Schedule thereto, and accordingly those enactments shall be repealed.
4 Words used as name or description of an article of substance.
(1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of a word or words which the trade mark contains or of which it consists as the name or description of an article or substance:
Provided that, if it is proved either—
(a ) that there is a well-known and established use of the word or words as the name or description of the article or substance by a person or persons carrying on a trade therein, not being use in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) goods certified by the proprietor; or
(b ) that the article or substance was formerly manufactured under a patent (being a patent in force at, or granted after, the passing of the Trade Marks Act, 1919), that a period of two years or more after the cesser of the patent has elapsed, and that the word or words is or are the only practicable name or description of the article or substance,
the provisions of the next succeeding subsection shall have effect.
(2) Where the acts mentioned in paragraph (a ) or (b ) of the foregoing subsection are proved with respect to any word or words, then—
(a ) if the trade mark consists solely of that word or those words, the registration of the trade mark, so far as regards registration in respect of the article or substance in question or of any goods of the same description, shall be deemed for the purposes of section thirty-five of the principal Act to be an entry wrongly remaining on the register;
(b ) if the trade mark contains that word or those words and other matter, the Court or the Registrar, in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance in question and of any goods of the same description, may, in case of a decision in favour of its remaining on the register, require as a condition thereof that the proprietor shall disclaim any right to the exclusive use in relation to that article or substance and any goods of the same description of that word or those words, so however, that no disclaimer upon the register shall affect any lights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made; and
(c ) for the purposes of any other legal proceedings relating to the trade mark,—
(i) if the trade mark consists solely of that wold or those words, all rights of the proprietor to the exclusive use of the trade mark, or
(ii) if the trade mark contains that word or those words and other matter, all rights of the proprietor to the exclusive use of that word or those words,
in relation to the article or substance in question or to any goods of the same description, whether under the common law or by registration, shall be deemed to have ceased on the date at which the use mentioned in paragraph (a ) of the last foregoing subsection first became well known and established, or at the expiration of the period of two years mentioned in paragraph (b ) of the last foregoing subsection.
(3) No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration in force at the commencement of this Act or thereafter shall, notwithstanding anything in section forty-one of the principal Act, be deemed for the purposes of section thirty-five of the principal Act to be an entry made in the register without sufficient cause, or an entry wrongly remaining on the register, as the circumstances may require:
Provided that the foregoing provisions of this subsection shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.
(4) The foregoing provisions of this section shall have effect in substitution for the provisions of section six of the Trade Marks Act, 1919, and accordingly that section shall be repealed.
5 Preliminary advice by Registrar as to distinctiveness.
(1) The power to give to a person who proposes to apply for the...
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