Registration of UK Trade Marks Act

Link to law: http://tuvalu-legislation.tv/cms/images/LEGISLATION/PRINCIPAL/1939/1939-0003/RegistrationofUKTradeMarksAct_1.pdf
Published: 1939-08-22

Registration of United Kingdom Trade Marks Act


2008 Revised Edition

CAP. 40.52






REGISTRATION OF UNITED KINGDOM
TRADE MARKS ACT

Registration of United Kingdom Trade Marks Act CAP. 40.52 Arrangement of Sections





2008 Revised Edition


Page 3



REGISTRATION OF UNITED KINGDOM TRADE
MARKS ACT

Arrangement of Sections
Section
1 Short title................................................................................................................ 5
2 Interpretation.......................................................................................................... 5
3 Application to register trade mark registered in United Kingdom......................... 5
4 Documents required on application for registration .............................................. 6
5 Issue of certificate of registration .......................................................................... 6
6 Effect of certificate ................................................................................................ 6
7 Period for which effective...................................................................................... 6
8 Saving of “Passing off” action............................................................................... 6
9 Jurisdiction of the High Court................................................................................ 7
10 Entry in Register of Assignments .......................................................................... 7
11 Registered users ..................................................................................................... 7
12 Rights of registered users....................................................................................... 7
13 Power to make regulations and prescribe fees ....................................................... 7
14 A Register of Trade Marks to be kept and to be open to inspection...................... 8
15 Entry in Register of renewals of United Kingdom registration ............................. 8
16 Alteration of Register............................................................................................. 8
17 Entry in Register or certified copy to be admissible in evidence........................... 8

Supporting Documents

ENDNOTES 9

Registration of United Kingdom Trade Marks Act CAP. 40.52 Section 1





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REGISTRATION OF UNITED KINGDOM TRADE
MARKS ACT

AN ACT TO PROVIDE FOR THE REGISTRATION OF TRADE MARKS
REGISTERED IN THE UNITED KINGDOM1

Commencement [22nd August 1939]

1 Short title
This Act may be cited as the Registration of United Kingdom Trade Marks Act.

2 Interpretation2
In this Act —

“goods" includes services;

“the Register” means the Register of Trade Marks kept under this Act;

“the Registrar” means the public officer who shall be appointed by the
Minister to perform the duties of the Registrar or any matters incidental
thereto under the Act;

“the United Kingdom” includes the Isle of Man; and

"user" includes a licensee of a trade mark.



3 Application to register trade mark registered in United Kingdom3
Any person being the registered proprietor of a trade mark in the United Kingdom
by virtue of an entry in the register of trade marks kept under any law in force in the
United Kingdom, or any person deriving title from such registered proprietor by
assignment or other mode of transfer, may apply at any time during the existence of

Section 4 CAP. 40.52 Registration of United Kingdom Trade Marks Act





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the registration in the United Kingdom to have such trade mark registered in Tuvalu
in respect of some or all of the goods comprised in the United Kingdom registration.

4 Documents required on application for registration4
An application for registration of a trade mark under this Act shall be made to the
Registrar and accompanied by a certified representation of the trade mark and a
certificate of the Comptroller-General of Patents, Designs and Trade Marks (under
his title of Registrar of Trade Marks) giving full particulars of the registration of the
trade mark in the United Kingdom.

5 Issue of certificate of registration
Upon such application being lodged, together with the documents mentioned in
section 4, the Registrar shall enter the prescribed particulars in the Register, and
shall issue a certificate of registration to the applicant, who shall then be the
registered proprietor in Tuvalu of the trade mark in respect of the goods entered in
the Register.

6 Effect of certificate
Subject to the provisions of this Act a registered proprietor shall have in Tuvalu such
privileges and rights in the use of the trade mark in respect of the goods entered in
the Register as mutatis mutandis would be conferred on him by law for the time
being in force in the United Kingdom.

7 Period for which effective
The privileges and rights conferred by section 6 shall date from the date of
registration in the United Kingdom and shall continue in force, subject to section 15,
for so long as the registration in the United Kingdom remains in force in respect of
the goods for which the trade mark is registered in Tuvalu:

Provided that no action for infringement of the trade mark shall be entertained in
respect of any use of the trade mark prior to the date of the issue of the certificate of
registration in Tuvalu.

8 Saving of “Passing off” action
Nothing in this Act shall be deemed to affect any right of action against any person
for passing off goods as those of another person or any remedy in respect thereof.

Registration of United Kingdom Trade Marks Act CAP. 40.52 Section 9





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Page 7



9 Jurisdiction of the High Court5
The High Court shall have power, upon the application of any person who alleges
that his interests have been prejudicially affected by the issue of a certificate of
registration, to declare on any of the grounds mutatis mutandis on which the United
Kingdom registration might be revoked under the law for the time being in force in
the United Kingdom, that the exclusive privileges and rights have not been acquired.

10 Entry in Register of Assignments
Subject to the provisions of this Act, where a person becomes entitled by assignment
or other mode of transfer to the privileges and rights conferred on a registered
proprietor by this Act, the Registrar shall, on application being made in the
prescribed manner and on proof of title to his satisfaction cause such person to be
entered in the Register as subsequent registered proprietor of the trade mark.

11 Registered users6
Any person entered in the United Kingdom Register of Trade Marks under any law
in force in the United Kingdom as a registered user in respect of any goods of a
trade mark in respect of which a certificate of registration under this Act is in force,
may apply to be registered in Tuvalu as a registered user of the mark in respect of
some or all such goods, subject to any conditions or restrictions entered in the
United Kingdom register.

12 Rights of registered users
Upon such application being lodged, together with a certificate of the United
Kingdom Registrar of Trade Marks giving full particulars of the entry in the United
Kingdom register, the Registrar shall cause the applicant to be entered in the
Register of Tuvalu as a registered user of the trade mark, and on such entry the
registered user shall be entitled in Tuvalu, subject to the aforesaid conditions and
restrictions, to such privileges and rights in respect of the goods for which he is
entered as mutatis mutandis would be conferred on him by law for the time being in
force in the United Kingdom.

13 Power to make regulations and prescribe fees
The Minister may make such regulations and do such things as he may think
expedient, subject to the provisions of this Act, for regulating procedure under this
Act and prescribing the fees to be paid in respect of proceedings under this Act,
other than procedure in relation to applications to the High Court and fees payable in
respect thereof; and generally for prescribing anything which by this Act is to be
prescribed.

Section 14 CAP. 40.52 Registration of United Kingdom Trade Marks Act





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14 A Register of Trade Marks to be kept and to be open to inspection
The Registrar shall keep in his office a book, to be called the Register of Trade
Marks, in which he shall register the particulars to be kept and of any documents
filed showing the number, nature and date thereof and the name of the registered
proprietor or parties thereto; and such Register and all documents relating to entries
therein which may have been duly filed, shall be open to the inspection of any
person during office hours on payment of the prescribed fee.

15 Entry in Register of renewals of United Kingdom registration
If the registration in the United Kingdom of a trade mark registered under this Act is
renewed, the registered proprietor may, within such time after the date of renewal in
the United Kingdom as may be prescribed, notify the Registrar, who shall then, on
sufficient evidence thereof and on payment of the prescribed fee, renew the
registration in the Register in the prescribed manner; and if the registration in the
Register is not so renewed, it shall be cancelled by the Registrar.

16 Alteration of Register
The Registrar may, on request in writing made by the registered proprietor and on
payment of the prescribed fee —

(1) cancel the registration of a trade mark or of a registered user thereunder either
wholly or as regards any particular goods in respect of which the trade mark
or registered user is registered;

(2) correct any clerical error in, or in connection with, any application under this
Act or in any matter which is entered in the Register;

(3) enter in the Register any change in the name, description or address of the
person who is registered as proprietor or user of a trade mark.

17 Entry in Register or certified copy to be admissible in evidence
Any entry in the Register or any certified copy thereof or of any document duly filed
signed by the Registrar shall be admitted in evidence in all courts of Tuvalu and in
all proceedings without further proof.




Registration of United Kingdom Trade Marks Act CAP. 40.52 ENDNOTES





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ENDNOTES


1 1990 Revised Edition, Cap. 63 – Acts 3 of 1939, 10 of 1967, 8 of 1971, 13 of 1972, LN 26/1976,

LN 9/1981
Amended by Act 3 of 1997 commencement 11 April, 1997,
Amended by Act 8 of 2002 commencement 26 March 2003
2 Amended by Acts 3 of 1997, 8 of 2002
3 Amended by Act 3 of 1997
Act 3 of 1997 contained the following transitional provision —

“3. Upon the commencement of this Act, and subject to the provisions of the Registration of
United Kingdom Trade Marks Act -

(a) trade marks entered in the Register by virtue of their registration in the United Kingdom
under the Trade Marks Act 1938 shall continue on the Register as if registered under
the law in force in the United Kingdom at the commencement of this Act; and

(b) entries in the Register in respect of registered users made pursuant to section 28 of the
Trade Marks Act 1938 shall continue to have effect as if made pursuant to any law in
force in the United Kingdom at the commencement of this Act as regards licensees of
trade marks.”


4 Amended by Act 3 of 1997
5 Amended by Act 3 of 1997
6 Amended by Act 3 of 1997
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