Trade Marks (Amendment) Act 1984

1. Subject to the following provisions of this Schedule—

2.

(1) Section 4 (right given by registration in Part A and infringement thereof) shall be modified as follows.

(2) In subsection (1)—

(a ) for the words ‘(whether before or after the commencement of this Act)’ there shall be substituted the words ‘after the coming into force of the Trade Marks (Amendment) Act 1984’;

(b ) the words ‘(other than a certification trade mark)’ and the words ‘or be deemed to have given’ shall be omitted;

(c ) for the words from ‘a mark identical’ to ‘in the course of trade’ there shall be substituted the words ‘in connection with the provision of any services a mark identical with or nearly resembling it’; and

(d ) for paragraph (b ) there shall be substituted the following paragraph—

‘(b ) in a case in which the use is use at or near the place where the services are available for acceptance or performed or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the mark or to services with the provision of which such a person as aforesaid is connected in the course of business.’

(3) In subsection (2) (effect of conditions and limitations), for the words from ‘goods to be sold’ to ‘any market’ there shall be substituted the words ‘services for use or available for acceptance in any place, country or territory’.

(4) In subsection (3) (cases where there is no infringement), for paragraphs (a ) and (b ) there shall be substituted the following paragraphs—

‘(a ) in relation to services to which the proprietor of the mark or a registered user conforming to the permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the mark; or

(b ) in relation to services the provision of which is connected in the course of business with the proprietor or a registered user of the mark, where the proprietor or registered user has at any time expressly or impliedly consented to the use of the mark; or

(c ) in relation to services available for use with other services in relation to which the mark has been used without infringement of the right given by registration or might for the time being be so used, if—

(i) the use of the mark is reasonably necessary in order to indicate that the services are available for such use, and

(ii) neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connection in the course of business between any person and the provision of those services.’

3.

(1) In subsection (1) of section 5 (right given by registration in Part B and infringement thereof), for the words ‘(whether before or after the commencement of this Act)’ there shall be substituted the words ‘after the commencement of the Trade Marks (Amendment) Act 1984’ and the words ‘or be deemed to have given’ shall be omitted.

(2) In subsection (2) of that section—

(a ) the words from ‘otherwise’ to ‘succeeding section’ shall be omitted; and

(b ) for the words from ‘a connection’ onwards there shall be substituted the words ‘that a person having the right either as proprietor or as registered user to use the mark is connected in the course of business with the provision of the services’.

4. Section 6 (infringement by breach of certain conditions) shall be omitted.

5. In section 8(b ) (registration not to restrict use of descriptions of character or quality of goods) the words from ‘or in’ to ‘thirty-seven’ shall be omitted.

6.

(1) In subsection (1) of section 9 (distinctiveness requisite for registration in Part A), the words ‘(other than a certification trade mark)’ shall be omitted.

(2) In subsection (2) of that section (meaning of ‘distinctive’), for the words from ‘distinguish’ to ‘subsists’ there shall be substituted the words ‘distinguish services with the provision of which the proprietor is or may be connected, in the course of business, from services with the provision of which he is not so connected’.

7. In section 10(1) (capability of distinguishing requisite for registration in Part B) for the words from ‘distinguishing’ to ‘subsists’ there shall be substituted the words ‘distinguishing services with the provision of which the proprietor of the mark is or may be connected in the course of business from services with the provision of which he is not so connected’.

8.

(1) Section 12 (prohibition of registration of identical and nearly resembling trade marks) shall be modified as follows.

(2) In subsection (1), for the words from ‘a trade mark belonging’ to the end there shall be substituted the words ‘or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same services, the same description of services, or goods or a description of goods which are associated with those services or services of that description.’

(3) In subsection (2), for the words from ‘of trade marks’ to ‘proprietor’ there shall be substituted the words ‘by more than one proprietor, in respect of—

(a ) the same services,

(b ) the same description of services, or

(c ) services and goods or descriptions of services and goods which are associated with each other,

of marks that are identical or nearly resemble each other.’.

(4) In subsection (3), for the words from ‘trade marks’ to ‘description of goods’ there shall be substituted the words ‘marks that are identical or nearly resemble each other, in respect of—

(a ) the same services,

(b ) the same description of services, or

(c ) services and goods or descriptions of services and goods which are associated with each other.’.

9. In section 14 (registration subject to disclaimer), in paragraph (b ), for the words ‘the trade’ there shall be substituted the words ‘the provision of services of...