Statement
Subject to subsection (2) below, the Trade Marks Act 1938 shall have effect with respect to service marks as it has effect with respect to trade marks (references to goods having effect as references to services).
The Act of 1938 shall have effect in relation to service marks as mentioned in Schedule 1 to this Act.
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In consequence of the preceding provisions of this section, the Act of 1938 shall have effect, in cases where it applies otherwise than by virtue of the preceding provisions of this section, with the amendments specified in Schedule 2 to this Act.
The Act of 1938 shall be further amended as follows—
in section 2 (no action for infringement of unregistered mark) the words “goods as the goods of another person” shall be omitted ;
in section 68 (interpretation), after subsection (2) there shall be inserted the following subsections—.
In the application by virtue of subsection (1) above of section 7 of the Act of 1938 (restrictions on exclusive right conferred by registration) the references in that section to the use of the mark by a person’s predecessors in title shall, as respects use before this Act comes into force, be construed as references to use by any predecessor of his in business.
In this Act “service mark” means a mark (including a device, name, signature, word, letter, numeral, or any combination thereof) used or proposed to be used in relation to services for the purpose of indicating, or so as to indicate, that a particular person is connected, in the course of business, with the provision of those services, whether with or without any indication of the identity of that person.
" mark ", except in the expression " trade mark ", includes a device, name, signature, word, letter, numeral, or any combination thereof; and
" trade mark " has the same meaning as in the Act of 1938.
This Act may be cited as the Trade Marks (Amendment) Act 1984.
This Act shall come into force on the 1st day of October 1987 or on such earlier day as the Secretary of State may by order made by statutory instrument appoint.
This Act extends to Northern Ireland . . .
This Act shall extend to the Isle of Man subject to any exceptions, adaptations or modifications contained in an Order made by Her Majesty in Council.
references in the Act to a trade mark (except as regards the name of the register) shall have effect as references to a mark falling within subsection (3) of section 1 of this Act; and
references in the Act to goods, shall have effect as references to services.
Section 4 (right given by registration in Part A and infringement thereof) shall be modified as follows. In subsection (1)— “(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.” 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”. In subsection (3) (cases where there is no infringement), for paragraphs (a) and (b) there shall be substituted the following paragraphs—
In subsection (1) of section 5 (right given by registration in Part B and infringement thereof), for the words “(whether before or afer 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. In subsection (2) of that section—
Section 6 (infringement by breach of certain conditions) shall be omitted.
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.
In subsection (1) of section 9 (distinctiveness requisite for registration in Part A), the words “(other than a certification trade mark)” shall be omitted. 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”.
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”.
Section 12 (prohibition of registration of identical and nearly resembling trade marks) shall be modified as follows. 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.” of marks that are identical or nearly resemble each other. In subsection (3), for the words from “trade marks” to “description of goods” there shall be substituted the wordsmarks that are identical or nearly resemble each other, in respect of— .
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 that description”.
Section 15 (words used as name or description of an article or substance not to invalidate registration of a mark) shall be modified as follows. In subsection (1), for the words “an article or substance” where they occur immediately before the proviso there shall be substituted the words “some activity:” and the following shall be substituted for the proviso— “Provided that, if it is proved that there is a well-known and established use of the word or words as the name or description of some activity by a person or persons providing services which include that activity, not being use in relation to services with the provision of which the proprietor or a registered user of the mark is connected in the course of business, the provisions of subsection (2) below shall have effect.”. In subsection (2)— Subsection (3) shall be omitted.
In section 20 (duration and renewal of registration) the proviso to subsection (1) shall be omitted and in paragraph (a) of the proviso to subsection (4), for the words “trade use” there shall be substituted the words “business use”.
Section 22 (assignability and transmissibility of trade marks) shall be modified as follows. In subsection (1) the words from “Notwithstanding” to “contrary” and the words “and shall be deemed always to have been” shall be omitted. In subsection (2) the words “and shall be deemed always to have been” and the words “or was registered, as the case may be” shall be omitted. In subsection (3) the words “or was” wherever they occur shall be omitted. For subsection (4) there shall be substituted the following subsection— In subsection (5), for the words “the goods and” there shall be substituted the words “the services or the association of the services and goods or descriptions of services and goods and to the similarity”. In subsection (6) the words “on or after the appointed day” shall be omitted in both places where they occur and, in the words before the proviso, for the words following “by registration” there shall be substituted the words— In subsection (7), for the words “in those goods is made, on or after the appointed day” there shall be substituted the words “of providing those services is made”.
Section 23 (certain marks to be associated) shall be modified by the insertion, after subsection (2), of the following subsection—
Section 26 (removal from register and imposition of limitations on ground of non-use) shall be modified as follows. In subsection (1)— In subsection (2), for the words from the beginning to the end of paragraph (b) there shall be substituted the following—. In subsection (3), for the words “that is shown to have been due to special circumstances in the trade” there shall be substituted the words “in relation to particular services that is shown to have been due to special circumstances affecting the provision of those services”.
Section 27 (defensive registrations) shall be omitted.
In subsection (1) of section 28 (registered users) the words “(otherwise than as a defensive trade mark)” shall be omitted and for the words “goods with which he is connected in the course of trade” there shall be substituted the words “ services with the provision of which he is connected in the course of business ”. In subsection (7) of that section, for the word “trade” there shall be substituted the word “business”.
For section 31 (use of trade mark for export trade) there shall be substituted the following section—
Section 37 and Schedule 1 (certification trade marks) shall be omitted.
Section 38 and Schedule 2 (Sheffield marks) shall be omitted.
In section 49 (trade usage to be considered), for the words “trade name” there shall be substituted the words “business name” and for the words “the usages of the trade concerned” there shall be substituted the words “business usages in the provision of the services in question”.
Section 39 (trade marks for textile goods) shall be omitted.
In subsection (2)(c) of section 60 (offences of false representation), for the words “goods to be exported to that country” there shall be substituted the words “services for use in that country”.
In section 39A (registration of trade marks following overseas application)—
in subsection (2), for the word “A” there shall be substituted the words “Subject to subsection (2A) below, a”;
the following subsection shall be inserted after that subsection—;
the following subsection shall be substituted for subsection (8)—.
In section 62 (change of form of trade connection not deceptive)—
for the words “goods between”, in both places where they occur, there shall be substituted the words “services between the provision of”; and
for the word “trade”, in both places where it occurs, there shall be substituted the word “business”.
In section 63 (jointly owned marks), for paragraph (b) there shall be substituted the following paragraph— “(b) in relation to services with the provision of which both or all of them are connected in the course of business,”.
Section 64A (restriction on importation of goods bearing infringing trade marks) shall be omitted.
Section 68 (interpretation of Act) shall be modified as follows. In subsection (1)—
“provision” , in relation to services, means their provision for money or money’s worth; ” In subsection (2) (what is use of a mark) for the words from “goods” to the end there shall be substituted the words “services shall be construed as references to the use of the mark as or as part of any statement about the availability of performance of services or otherwise in relation to services”.
Section 69 and Schedule 3 shall be omitted.
Section 1(4).
In section 4(1) (right given by registration in Part A), for the words from “a mark identical” to “in the course of trade” there shall be substituted the words “ in the course of trade a mark identical with or nearly resembling it, ”.
Section 12 (prohibition of registration of identical and nearly resembling trade marks) shall be amended as follows. In subsection (1), for the words from “a trade mark belonging” to the end there shall be substituted the wordsor nearly resembles a mark belonging to a different proprietor and already on the register in respect of— of marks that are identical or nearly resemble each other, In subsection (3), for the words from “trade marks” to “description of goods” there shall be substituted the wordsmarks that are identical or nearly resemble each other, in respect of— .
Section 22 (assignability and transmissibility of trade marks) shall be amended as follows. In subsection (4)— In subsection (5), for the words “the goods and” there shall be substituted the words “ the goods or the association of the goods anf services or descriptions of goods and services and to the similarity ”. In subsection (6), in the words before the proviso, for the words following “by registration” there shall be substituted the words—.
Section 23 (certain trade marks to be associated) shall be amended by the insertion, after subsection (2), of the following subsection—