Trade Marks Act 1998
Table of Contents
Long Title
Part 1 PRELIMINARY
1 Short title
2 General interpretation
3 Meaning of infringing goods, material or articles and counterfeit goods or trade mark
Part 2 REGISTRATION OF TRADE MARKS
Introductory
4 Registered trade marks
Application for registration of trade mark
5 Application for registration
5A Division of application for registration
6 Classification of goods and services
Grounds for refusal of registration
7 Absolute grounds for refusal of registration
8 Relative grounds for refusal of registration
9 Raising of relative grounds in case of honest concurrent use
Priority
10 Claim to priority of Convention application
11 Claim to priority from other relevant overseas application
Registration procedure
12 Examination of application
13 Publication and opposition proceedings
14 Withdrawal, restriction or amendment of application
15 Registration
16 Revocation of acceptance
Series of trade marks
17 Registration of series of trade marks
Duration, renewal and alteration of registered trade mark
18 Duration of registration
19 Renewal of registration
20 Alteration of registered trade mark
Cancellation, revocation and invalidity
21 Cancellation of registered trade mark
22 Revocation of registration
23 Grounds for invalidity of registration
24 Effect of acquiescence
Miscellaneous
25 Amendment of other documents
Part 3 RIGHTS AND REMEDIES OF PROPRIETOR OF REGISTERED TRADE MARK
Rights of proprietor of registered trade mark
26 Rights conferred by registered trade mark
27 Acts amounting to infringement of registered trade mark
28 Acts not amounting to infringement
29 Exhaustion of rights conferred by registered trade mark
30 Registration subject to disclaimer or limitation
Infringement proceedings
31 Action for infringement
32 Order for erasure, etc., of offending sign
33 Order for delivery up of infringing goods, material or articles
34 Order as to disposal of infringing goods, material or articles
35 Remedy for groundless threats of infringement proceedings
Part 4 REGISTERED TRADE MARK AS OBJECT OF PROPERTY
36 Nature of registered trade mark
37 Co-ownership of registered trade mark
38 Assignment, etc., of registered trade mark
39 Registration of transactions affecting registered trade mark
40 Trusts and equities
41 Application for registration of trade mark as object of property
Part 5 LICENSING
42 Licensing of registered trade mark
43 Exclusive licences
44 General provisions as to rights of licensees in case of infringement
45 Exclusive licensee having rights and remedies of assignee
Part 6 OFFENCES
46 Counterfeiting a trade mark
47 Falsely applying a registered trade mark to goods or services
48 Making or possessing of article for committing offence
49 Importing or selling, etc., goods with falsely applied trade mark
50 Falsification of register, etc.
51 Falsely representing trade mark as registered
52 Representation on trade marks of Arms or Flags prohibited, etc.
53 Forfeiture and destruction of goods, etc., on conviction
53A Enforcement measures
Part 7 INTERNATIONAL MATTERS
The Madrid Protocol, etc.
54 Power to make provision giving effect to Madrid Protocol, etc.
The Paris Convention, the TRIPS Agreement and well known trade marks: supplementary provisions
55 Protection of well known trade marks
55A Permitted use of well known trade marks
56 National emblems, etc., of Convention countries: Article 6ter of Paris Convention, etc.
57 Emblems, etc., of certain international organisations: Article 6ter of Paris Convention, etc.
58 Notification under Article 6ter of Paris Convention, etc.
59 Acts of agent or representative: Article 6septies of the Paris Convention, etc.
Part 8 COLLECTIVE MARKS AND CERTIFICATION MARKS
60 Collective marks
61 Certification marks
Part 9 ADMINISTRATIVE AND OTHER SUPPLEMENTARY PROVISIONS
The Registrar
62 Registrar of Trade Marks and other officers
63 Delegation by Registrar
64 Registry of Trade Marks
65 Seal of Registry
The Register
66 The register
67 Rectification of register
68 Inspection of and extract from register
Powers and duties of Registrar
69 Costs awarded by Registrar
70 Security for costs
71 Evidence before Registrar
72 Disobedience to summons an offence
73 Refusal to give evidence an offence
74 Exclusion of liability in respect of official acts
75 Appeals from Registrar
Forms, fees, hours of business and publication
76 Forms and directions of Registrar
77 Fees
78 Hours of business and excluded days
79 Publication of trade mark applications, etc.
Trade mark agents
80 Recognition of agents
Part 10 ASSISTANCE BY BORDER AUTHORITIES
Division 1 — Preliminary provisions
81 Interpretation of this Part
81A Delegation of Director-General’s powers
81B Fees
Division 2 — Seizure of goods on request
82 Restriction of importation or exportation of infringing goods
83 Security for liability or expense of seizure, storage and disposal
84 Secure storage of seized goods
85 Notice of seizure
85A Persons bound to give information or produce documents
85B Information on import or export
86 Inspection, release, etc., of seized goods
87 Forfeiture of seized goods by consent
88 Compulsory release of seized goods to importer or exporter
89 Compensation for failure to take action
90 Actions for infringement of registered trade mark
91 Retention of control of seized goods
92 Disposal of seized goods
93 Insufficient security
Division 3 — Ex-officio seizure of goods
93A Seizure and inspection of counterfeit goods
93B Requirements for continued detention
93C Notice to take action
93D Persons bound to give information or produce documents
93E Information on import or export
93F Forfeiture of seized goods by consent
93G Compulsory release of seized goods to dealer
93H Provisions relating to infringement action
93I Compensation for failure to take action
93J Retention of control of seized goods
93K Disposal of seized goods
93L Insufficient security
Division 4 — Powers of search
94 Powers of search in relation to vessels, aircraft and vehicles
95 Examination of packages, etc.
96 Power to remove packages and goods to police station or examination station
97 Search of persons and baggage
98 Powers of authorised officers to enter certain premises
Division 5 — Miscellaneous provisions
99 Obstruction
100 Protection from personal liability
Part 11 MISCELLANEOUS AND GENERAL PROVISIONS
101 Registration to be prima facie evidence
102 Certificate of validity of contested registration
103 Certificate of Registrar
104 Costs of proceedings before Court
105 Burden of proving use of trade mark
105A Composition of offences
106 Jurisdiction of Courts
107 Offence committed by partnership or body corporate
108 Power to make rules
109 Transitional provisions
Legislative History
Abbreviations
Comparative Table