Trade Marks (International Registration) (Amendment) Order 2002
| Jurisdiction | UK Non-devolved |
| Citation | SI 2002/692 |
| Year | 2002 |
2002 No. 692
TRADE MARKS
The Trade Marks (International Registration) (Amendment) Order 2002
Made 14th March 2002
Laid before Parliament 14th March 2002
Coming into force 4th April 2002
The Secretary of State, in exercise of the powers conferred by section 54 of the Trade Marks Act 19941, hereby makes the following Order:
Citation, commencement and extent
1.—(1) This Order may be cited as the Trade Marks (International Registration) (Amendment) Order 2002 and shall come into force on 4th April 2002.
(2) This Order extends to England and Wales, Scotland, Northern Ireland and the Isle of Man.
Amendment of the Trade Marks (International Registration) Order 1996
2. The Trade Marks (International Registration) Order 19962(“the Principal Order”) shall be amended as set out in articles 3 to 11.
3. In article 2 at the end of the definition of “Common Regulations” there shall be inserted “as amended with effect from 1st April 2002”.
4. In article 4—
(a) in paragraph (4)(a), after the words “trade mark” there shall be inserted “in the United Kingdom”;
(b) for paragraph (5) there shall be substituted—
“Where an international registration contains a disclaimer of any right to the exclusive use of any specified element of the trade mark or where a protected international trade mark (UK) is subject to a disclaimer or limitation by virtue of a notice sent to the registrar under paragraph (4) above, the rights conferred in relation to it by the application of section 9 are restricted accordingly.”.
5. In article 6—
(a) for paragraph (1) there shall be substituted—
“1 The granting of any security interest (whether fixed or floating) over an international trade mark (UK) or any right in or under it is a notifiable transaction for the purposes of this article.”;
(b) after paragraph (3)(b) there shall be inserted—
“(bb)
“(bb) the grant of a licence under an international trade mark (UK);”;
(c) for paragraph (5) there shall be substituted—
“5 Where a person becomes the proprietor or licensee of an international trade mark (UK) by virtue of a relevant transaction, then unless—
(a) a request for recordal in the International Register is made before the end of a period of six months beginning with its date, or
(b) the court is satisfied that it was not practicable for such a request for recordal to be made before the end of that period and that a request for recordal was made as soon as practicable thereafter,
he is not entitled to damages or an account of profits in respect of any infringement of the international trade mark (UK) occurring after the date of the transaction and before the transaction is recorded in the International Register.”.
6. In article 9—
(a) in paragraph (3), for the words “notice of refusal” there shall be substituted “notice of provisional refusal”; and
(b) in paragraph (4), for the words “Notice of refusal” there shall be substituted “Notice of provisional refusal”.
7. In article 10—
(a) in paragraph (3), for the words “notice of refusal” there shall be substituted “notice of provisional refusal”; and
(b) in paragraph (4), for the words “notice of refusal” there shall be substituted “notice of provisional refusal”.
8. For article 11 there shall be substituted—
“Notices of provisional refusal
11.—(1) Except where provisional refusal is based on an opposition, notice of provisional refusal shall not be given after the expiry of 18 months from the date on which the notification of the request for extension was sent to the United Kingdom.
(2) The registrar shall inform the International Bureau that oppositions may be filed after the expiry of the period of 18 months referred to in paragraph (1) above unless, at least four months before the expiry of the said period, he has published the notice referred to in article 10(1).
(3) Notices of provisional refusal shall set out the matters required by Article 5 of the Madrid Protocol and Rule 17 of the Common Regulations.
(4) Where the registrar has given notice of provisional refusal to the International Bureau pursuant to article 9(3) or 10(3), the registrar shall, upon deciding whether the provisional refusal shall be upheld, in whole or in relation to some only of the goods or services in relation to which protection in the United Kingdom is requested, notify the International Bureau of that decision.
(5) Where, after a decision of the registrar has been notified to the International Bureau pursuant to paragraph (4) the decision is referred to an appointed person or the court on appeal or further appeal from the registrar, the registrar shall notify the International Bureau of the decision of that person or court.”.
9.—(1) Article 12 shall be amended as follows.
(2) For paragraph (1) there shall be substituted—
“1 Where the period of 18 months from the date on which the notification of the request for extension was sent to the United Kingdom expires without any notice of provisional refusal having been given and without the International Bureau having been informed that oppositions may be filed after the expiry of that period, the trade mark which is the subject of the request for protection shall thereupon be protected as a protected international trade mark (UK).
1A Subject to paragraph (1), where particulars of an international registration have been published pursuant...
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