PART IV
EFFECT OF REGISTRATION
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.
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) 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 the goods or services in respect of which the trade mark is registered 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 in the course of trade a mark identical with or nearly resembling it in relation to any goods or services 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 in relation to the goods or services in respect of which it is registered; or
(b)in a case in which the use is use upon the goods or in physical relation thereto or is use at or near the place where the services are available for acceptance, 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 or services 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 the trade mark in any manner in relation to goods to be sold or otherwise traded in, in a place, in relation to goods to be exported to a market, in relation to services for use or available for acceptance in a place, or in any other circumstances, to which, having regard to those conditions or 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 the trade 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 a 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;
(b)in relation to services to which the proprietor of the trade mark or a registered user conforming to the permitted use has applied the trade mark, where the purpose and effect of the use of the trade mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the trade mark or where the proprietor or registered user has at any time, expressly or impliedly, consented to the use of the trade mark; or
(c)in relation to goods or services adapted to form part of, or to be accessory to, other goods or services in relaiton 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 or services 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 fact, a connection in the course of trade between any person and the goods or services.
(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), the registration of a person in Part B of the register as proprietor of a trade mark shall, if valid, give or be deemed to have given to that person the like right 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 or services 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.—(1)  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 or services 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 or services by the proprietor or a predecessor in title of his; or
(b)to the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his,
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 or services under section 25.
(2)  The reference in the proviso to subsection (1) to the use of a trade mark by a person’s predecessor in title shall, as respects use in relation to sevices before 1st March 1991, be construed as references to use by any predecessor of his in business.
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(3)  Nothing in section 46(1) shall be construed as making applicable to a trade mark registered in Part B of the register subsection (1) relating to a trade mark registered in Part A of the register.
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Unregistered trade mark
49.  No person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trade mark.
Infringement
50.  In any action or proceeding relating to a trade mark or trade name, the court 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.
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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 in respect of goods, 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.
(3)  Section 46(2) shall 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 or services
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 or services, 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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“Passing off” action
53.  Nothing in this Act shall be deemed to affect rights of action against any person for passing or the remedies in respect thereof.
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