PART IV | Powers of registered proprietor |
44. Subject to the provisions of this Act —| (a) | the person for the time being entered in the register as proprietor of a trade mark shall, subject to any rights appearing from the register to be vested in any other person, have power to assign the trade mark and give effectual receipts for any consideration for such an assignment; | | (b) | any equities in respect of a trade mark may be enforced in like manner as in respect of any other personal property. |
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| Effect of registration in Part A of register |
45.—(1) Subject to this section, and sections 48 and 52, the registration of a person in Part A of the register as proprietor of a trade mark (other than a certification trade mark) in respect of any goods shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either —| (a) | as being use as a trade mark; or | | (b) | in a case in which the use is use upon the goods or in physical relation thereto 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 trade mark or to goods with which such a person as aforesaid is connected in the course of trade. |
| (2) The right to the use of a trade mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in, in any place, in relation to goods to be exported to any market, or in any other circumstances, to which, having regard to any such limitations, the registration does not extend. |
(3) The right to the use of a trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person —| (a) | in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or | | (b) | in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the facts a connection in the course of trade between any person and the goods. |
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| (4) The use of a registered trade mark, being one of two or more registered trade marks which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration as aforesaid, shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks. |
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| Effect of registration in Part B of register |
46.—(1) Except as provided by subsection (2) and by section 12(2), the registration of a person in Part B of the register as proprietor of a trade mark in respect of any goods shall, if valid, give or be deemed to have given to that person the like right in relation to those goods as if the registration had been in Part A of the register, and section 45 shall have effect in like manner in relation to a trade mark registered in Part B of the register as it has effect in relation to a trade mark registered in Part A of the register.| (2) In any action for infringement of the right to the use of a trade mark given by registration as aforesaid in Part B of the register, no injunction or other relief shall be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating 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 trade mark. |
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| Registration prima facie evidence of validity |
| 47. In all legal proceedings relating to a trade mark registered under this Act (including applications under section 39) the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof. |
| Registration conclusive after 7 years |
48. In all legal proceedings relating to a trade mark registered under this Act in Part A of the register (including applications under section 39) the original registration in Part A of the register of the trade mark shall after the expiration of 7 years from the date of the original registration be taken to be valid in all respects unless the original registration was obtained by fraud or unless the trade mark offends against section 15:| Provided that nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior — |
| | (a) | to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or |
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| | (b) | to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his, |
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| | whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods under section 25. |
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| 49. No person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trade mark. |
| 50. In any action or proceeding relating to a trade mark or trade name the tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get-up legitimately used by other persons. |
| Infringement of trade mark by breach of certain restrictions |
51.—(1) Where, by a contract in writing made with the proprietor or a registered user of a registered trade mark, a purchaser or owner of goods enters into an obligation to the effect that he will not do, in relation to the goods, an act to which this section applies, any person who, being the owner for the time being of the goods and having notice of the obligation, does that act, or authorises it to be done, in relation to the goods in the course of trade or with a view to any dealing therewith in the course of trade, shall be deemed thereby to infringe the right to the use of the trade mark given by the registration thereof, unless that person became the owner of the goods by purchase for money or money’s worth in good faith before receiving notice of the obligation or by virtue of a title derived through another who so became the owner thereof.(2) The acts to which this section applies are —| (a) | the application of the trade mark upon the goods after they have suffered alteration in any manner specified in the contract as respects their state or condition, get-up or packing; | | (b) | in a case in which the trade mark is upon the goods, the alteration, partial removal or partial obliteration thereof; | | (c) | in a case in which the trade mark is upon the goods, and there is also thereon other matter, being matter indicating a connection in the course of trade between the proprietor or registered user and the goods, the removal or obliteration, whether wholly or partially, of the trade mark unless that other matter is wholly removed or obliterated; | | (d) | in a case in which the trade mark is upon the goods, the application of any other trade mark to the goods; and | | (e) | in a case in which the trade mark is upon the goods, the addition to the goods of any other matter in writing that is likely to injure the reputation of the trade mark. |
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| (3) Section 46(2) does not apply to an act that is deemed by virtue of this section to be an infringement of a trade mark registered in Part B of the register. |
| (4) In this section references in relation to any goods to the proprietor, to a registered user, and to the registration, of a trade mark shall be construed, respectively, as references to the proprietor in whose name the trade mark is registered, to a registered user who is registered, and to the registration of the trade mark, in respect of those goods, and the expression “upon” includes in relation to any goods a reference to physical relation thereto. |
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| User of name, address or description of goods |
52. No registration of a trade mark shall interfere with —| (a) | any bona fide use by a person of his own name or of the name of his place of business, or of the name or of the name of the place of business, of any of his predecessors in business; or | | (b) | the use by any person of any bona fide description of the character or quality of his goods, not being a description that would be likely to be taken as importing any such reference as is mentioned in section 45(1)(b) or 68(2)(b). |
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| 53. Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as those of another person or the remedies in respect thereof. |
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