The Trade Marks (Isle of Man) Order 2013

• Citation: S.I. 2013/2601
• Sections: 71

Section 1 Citation and commencement

This Order may be cited as the Trade Marks (Isle of Man) Order 2013 and shall come into force on 11th November 2013.

Section 2 Exceptions to and modifications of the Trade Marks Act 1994 in its application to the Isle of Man

The Trade Marks Act 1994 shall, in its application to the Isle of Man, have effect subject to the exceptions and modifications specified in the Schedule to this Order.

Section 3 Revocation

The following instruments are revoked―

(a) the Trade Marks Act 1994 (Isle of Man) Order 1996 ;

(b) the Trade Marks Act 1994 (Isle of Man) (Amendment) Order 2002 ;

(c) the Trade Marks Act 1994 (Isle of Man) (Amendment) Order 2004 .

Section 1

(1) Any reference to an Act of Parliament (including the Trade Marks Act 1994) or to a provision of such an Act shall be construed as a reference to that Act or provision as it has effect in the Isle of Man.

(2) Any reference to an Act of Tynwald shall be construed as a reference to it as amended or replaced by or under any other such enactment.

Section 1A

In section 1 (trade marks), for subsection (1) substitute—

(1) In this Act “trade mark” means any sign which is capable—

(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and

(b) of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.

Section 2

(1) Section 3 (absolute grounds for refusal of registration) is amended as follows.

(2) In subsection (2), after “the shape” in each place insert “, or another characteristic,”.

(3) In subsection (4), for “or by any provision of Community law” substitute “other than law relating to trade marks”;

(4) After subsection (4), insert—

(4A) A trade mark is not to be registered if its registration is prohibited by or under—

(a) any enactment or rule of law, or

(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(c) any international agreement to which the United Kingdom ... is a party,

providing for the protection of designations of origin or geographical indications.

(4B) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(4C) A trade mark is not to be registered if it—

(a) consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and

(b) is in respect of plant varieties of the same or closely related species.

(4D) Subsection (4C)(a) refers to registration in accordance with any—

(a) enactment or rule of law, or

(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(c) international agreement to which the United Kingdom ... is a party,

providing for the protection of plant variety rights.

Section 3

(1) Section 5 (relative grounds for refusal of registration) is amended as follows.

(2) In subsection (3)—

(a) omit paragraph (b) and the word “and” immediately before it;

(b) omit “(or, in the case of a Community trade mark, in the European Community)”.

(3) After subsection (3), insert—

(3A) Subsection (3) applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.

(4) In subsection (4)(a), for “trade, or” substitute “trade, where the condition in subsection (4A) is met,”.

(5) In subsection (4), after paragraph (a) insert—

(aa) by virtue of ... any enactment or rule of law, providing for protection of designations of origin or geographical indications, where the condition in subsection (4B) is met, or

(6) In subsection (4)(b)—

(a) after “paragraph (a)” insert “or (aa)”; and

(b) omit “, design right or registered designs” and substitute “or the law relating to industrial property rights”.

(7) After subsection (4), insert—

(4A) The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application.

(4B) The condition mentioned in subsection 4(aa) is that—

(a) an application for a designation of origin or a geographical indication has been submitted prior to the date of application for registration of the trade mark or the date of the priority claimed for that application, and

(b) the designation of origin or (as the case may be) geographical indication is subsequently registered.

(8) After subsection (5) insert—

(6) Where an agent or representative (“R”) of the proprietor of a trade mark applies, without the proprietor’s consent, for the registration of the trade mark in R’s own name, the application is to be refused unless R justifies that action.

Section 3A

After section 5 (relative grounds for refusal of registration), insert—

Grounds for refusal relating to only some of the goods or services

(5A) Where grounds for refusal of an application for registration of a trade mark exist in respect of only some of the goods or services in respect of which the trade mark is applied for, the application is to be refused in relation to those goods and services only.

Section 4

(1) Section 6 (meaning of “earlier trade mark”) is amended as follows.

(2) In subsection (1)—

(a) in paragraph (a)—

(i) after “registered trade mark” omit “,” and insert “or”;

(ii) omit “or Community trade mark;

(aa) after paragraph (a) insert—

(aa) a comparable trade mark (EU) or a trade mark registered pursuant to an application made under paragraph 25 of Schedule 2A which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired;

(ab) a comparable trade mark (IR) or a trade mark registered pursuant to an application made under paragraph 28, 29 or 33 of Schedule 2B which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired;

(b) for paragraph (b) substitute―

(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(ba) a registered trade mark or international trade mark ( UK ) which—

(i) prior to exit day has been converted from a European Union trade mark or international trade mark ( EC ) which itself had a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired , and

(ii) accordingly has the same claim to seniority, or;

(c) in paragraph (c), after “Paris Convention” insert “or the WTO agreement”.

(2A) After subsection (1) insert—

(1A) In subsection (1), “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008.

(2B) In subsection (2)—

(a) omit “or (b)”;

(b) at the end, insert “(taking account of subsection (2C))”.

(2C) After subsection (2) insert—

(2A) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made pursuant to paragraph 25 of Schedule 2A and which if registered would be an earlier trade mark by virtue of subsection (1)(aa), subject to its being so registered.

(2B) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made pursuant to paragraph 28, 29 or 33 of Schedule 2B and which if registered would be an earlier trade mark by virtue of subsection (1)(ab), subject to its being so registered.

(2C) Where an application for registration of a trade mark has been made pursuant to paragraph 25 of Schedule 2A or paragraph 28, 29 or 33 of Schedule 2B, subsection (l)(a) is to apply as if the date of application for registration of the trade mark were—

(a) in the case of an application made pursuant to paragraph 25 of Schedule 2A, the relevant date referred to in paragraph 25(2) in respect of that application;

(b) in the case of an application made pursuant to paragraph 28 of Schedule 2B, the relevant date referred to in paragraph 28(2) in respect of that application (taking account of paragraph 28(5));

(c) in the case of an application made pursuant to paragraph 29 of Schedule 2B, the relevant date referred to in paragraph 29(2) in respect of that application (taking account of paragraph 29(4));

(d) in the case of an application made pursuant to paragraph 33 of Schedule 2B, the relevant date referred to in paragraph 33(2) or (3) (as the case may be) in respect of that application (taking account of paragraph 33(4)).

(3) Omit subsection (3).

Section 5

After section 6 insert—

Raising of relative grounds in opposition proceedings in case of non-use

(6A)

(1) This section applies where—

(a) an application for registration of a trade mark has been published,

(b) there is an earlier trade mark of a kind falling within section 6(1)(a), (b) or (ba) in relation to which the conditions set out in section 5(1), (2) or (3) obtain, and

(c) the registration procedure for the earlier trade mark was completed before the start of the relevant period .

(1A) In this section “the relevant period” means the period of 5 years ending with the date of the application for registration mentioned in subsection (1)(a) or (where applicable) the date of the priority claimed for that application.

(2) In opposition proceedings, the registrar shall not refuse to register the trade mark by reason of the earlier trade mark unless the use conditions are met.

(3) The use conditions are met if—

(a) within the relevant period the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or services for which it is registered, or

(b) the earlier trade mark has not been so used, but there are proper reasons for non-use.

(4) For these purposes—

(a) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor) , and

(b) use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes.

(5) In relation to a European Union trade mark or international trade mark (EC), any reference in subsection (3) or (4) to the United Kingdom shall be construed as a reference to the European Union.

(5A) In relation to an international trade mark ( EC ) the reference in subsection (1)(c) to the completion of the registration procedure is to be construed as a reference to the publication by the European Union Intellectual Property Office of the matters referred to in Article 190(2) of the European Union Trade Mark Regulation.

(6) Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services.

(7) Nothing in this section affects—

(a) the refusal of registration on the grounds mentioned in section 3 (absolute grounds for refusal) or section 5(4) (relative grounds of refusal on the basis of an earlier right), or

(b) the making of an application for a declaration of invalidity under section 47(2) (application on relative grounds where no consent to registration).

Section 5A

In section 8(5) (power to require that relative grounds be raised in opposition proceedings), for “the Community Trade Mark Regulation” substitute “Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade mark.

Section 5B

(1) Section 9 (rights conferred by registered trade mark) is amended as follows.

(2) In subsection (1) before “section 10” insert “subsections (1) to (3) of”.

(3) After subsection (1) insert—

(1A) See subsection (3B) of section 10 for provision about certain other acts amounting to infringement of a registered trade mark.

(1B) Subsection (1) is without prejudice to the rights of proprietors acquired before the date of filing of the application for registration or (where applicable) the date of the priority claimed in respect of that application.

(4) In subsection (2)—

(a) omit “such”, and

(b) at the end insert “such as is mentioned in subsection (1) or (1A)”.

Section 6

(1) Section 10 (infringement of registered trade mark) is amended as follows.

(2) In subsection (3)—

(a) after “course of trade” insert “, in relation to goods or services,”; and

(b) omit paragraph (b) and the word “and” immediately before it.

(3) After subsection (3) insert—

(3A) Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered.

(3B) Where the risk exists that the packaging, labels, tags, security or authenticity features or devices, or any other means to which the trade mark is affixed could be used in relation to goods or services and that use would constitute an infringement of the rights of the proprietor of the trade mark, a person infringes a registered trade mark if the person carries out in the course of trade any of the following acts—

(a) affixing a sign identical with, or similar to, the trade mark on packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark may be affixed; or

(b) offering or placing on the market, or stocking for those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark is affixed.

(4) In subsection (4)(c), after “under the sign;” omit “or”.

(5) After subsection (4)(c), insert—

(ca) uses the sign as a trade or company name or part of a trade or company name;

(6) In subsection (4)(d)—

(a) for “or” substitute “and”; and

(b) after “advertising” insert “; or”.

(7) Omit subsections (5) and (6).

Section 6A

After section 10, insert—

Right to prevent goods entering the UK without being released for free circulation

(10A)

(1) The proprietor of a registered trade mark is entitled to prevent third parties from bringing goods into the United Kingdom in the course of trade without being released for free circulation if they are goods for which the trade mark is registered which—

(a) come from outside the customs territory of the United Kingdom ; and

(b) bear without authorisation a sign which is identical with the trade mark or cannot be distinguished in its essential aspects from the trade mark.

(2) In subsection (1) the reference to goods for which the trade mark is registered includes a reference to the packaging of goods for which the trade mark is registered.

(3) Subsection (1) is without prejudice to the rights of proprietors acquired before the date of application for registration of the trade mark, or (where applicable) the date of the priority claimed in respect of that application.

(4) The entitlement of the proprietor under subsection (1) is to lapse if—

(a) proceedings are initiated in accordance with the European Customs Enforcement Regulation to determine whether the trade mark has been infringed; and

(b) during those proceedings evidence is provided by the declarant or the holder of the goods that the proprietor of the trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.

(5) References in this Act to the “European Customs Enforcement Regulation” are references to Regulation ( EU ) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights as amended from time to time .

Prohibition on the use of a trade mark registered in the name of an agent or representative

(10B)

(1) Subsection (2) applies where a trade mark is registered in the name of an agent or representative of a person (“P”) who is the proprietor of the trade mark, without P’s consent.

(2) Unless the agent or representative justifies the action mentioned in subsection (1), P may do either or both of the following—

(a) prevent the use of the trade mark by the agent or representative (notwithstanding the rights conferred by this Act in relation to a registered trade mark);

(b) apply for the rectification of the register so as to substitute P’s name as the proprietor of the registered trade mark.

Section 6B

(1) Section 11 (limits on effect of registered trade mark) is amended as follows.

(2) In subsection (1) omit “another registered trade mark in relation to goods and services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration))” and substitute “a later registered trade mark where that later registered trade mark would not be declared invalid pursuant to section 47(2A) or (2G) or section 48(1)”.

(3) After subsection (1) insert—

(1A) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(1B) Where subsection (1) ... applies, the later registered trade mark is not infringed by the use of the earlier trade mark even though the earlier trade mark may no longer be invoked against the later registered trade mark.

(4) In subsection (2)(a) for “a person” substitute “an individual”.

(5) In subsection (2)(b) for “indications concerning” substitute “signs or indications which are not distinctive or which concern”.

(6) In subsection (2)(c) for “where it” substitute “for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular where that use”.

Section 6C

After section 11, insert—

Non-use as defence in infringement proceedings

(11A)

(1) The proprietor of a trade mark is entitled to prohibit the use of a sign only to the extent that the registration of the trade mark is not liable to be revoked pursuant to section 46(1)(a) or (b) (revocation on basis of non-use) at the date the action for infringement is brought.

(2) Subsection (3) applies in relation to an action for infringement of a registered trade mark where the registration procedure for the trade mark was completed before the start of the period of five years ending with the date the action is brought.

(3) If the defendant so requests, the proprietor of the trade mark must furnish proof—

(a) that during the five-year period preceding the date the action for infringement is brought, the trade mark has been put to genuine use in the United Kingdom by or with the consent of the proprietor in relation to the goods and services for which it is registered and which are cited as justification for the action, or

(b) that there are proper reasons for non-use.

(4) Nothing in subsections (2) and (3) overrides any provision of section 46, as applied by subsection (1) (including the words from “Provided that” to the end of subsection (3)).

Section 6D

In section 12 (exhaustion of rights conferred by a registered trade mark), in subsection (1), after “market in” insert “the United Kingdom or”.

Section 7

After section 14(2) (action for infringement) insert—

(2A) Where in an action for infringement of a registered trade mark it is shown that the defendant knew, or had reason to believe, that he was committing an infringement, the damages awarded to the claimant shall be appropriate to the actual prejudice he suffered as a result of the infringement.

(2B) The court—

(a) in awarding such damages shall take into account all appropriate aspects, including in particular—

(i) the negative economic consequences, including any lost profits, which the claimant has suffered;

(ii) any unfair profits made by the defendant; and

(iii) elements other than economic factors, including the moral prejudice caused to the claimant by the infringement; or

(b) may where appropriate award such damages on the basis of the royalties or fees which would have been due had the defendant obtained a licence.

Section 8

In section 17 (meaning of infringing goods), in subsection (3), for “an enforceable Community right” substitute “anything which forms part of retained EU law as a result of section 3 or 4 of the European Union (Withdrawal) Act 2018.

Section 9

In section 18(3) (period after which remedy of delivery up not available), at the end insert―

(d) in the Isle of Man, has the same meaning as in the Limitation Act 1984 (an Act of Tynwald) .

Section 10

In section 19(6) (order as to disposal of infringing goods etc. ), for the words from “this section or” onwards substitute—

(a) this section ...;

(b) section 24D of the Registered Designs Act 1949 ;

(c) section 113 of the Copyright Act 1991 (an Act of Tynwald) ;

(d) section 19 of the Design Right Act 1991 (an Act of Tynwald) ;

(e) section 26 of the Performers’ Protection Act 1996 (an Act of Tynwald) ; or

(f) any corresponding statutory provision relating to Community designs and having effect in the Isle of Man.

Section 10A

(1) Section 24 (assignment, &c of registered trade mark) is amended as follows.

(2) After subsection (1) insert—

(1A) A contractual obligation to transfer a business is to be taken to include an obligation to transfer any registered trade mark, except where there is agreement to the contrary or it is clear in all the circumstances that this presumption should not apply.

Section 11

In section 25(4) (registration of transactions), for the words from “then unless” onwards substitute—

and the mark is infringed before the prescribed particulars of the transaction are registered, in proceedings for such an infringement, the court shall not award him costs unless—

(a) an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning with its date, or

(b) the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter.

Section 11A

(1) Section 27 (application for registration of trade mark as an object of property) is amended as follows.

(2) In subsection (1) after “sections 22 to 26 (which relate to a registered trade mark as an object of property)” insert “and sections 28 to 31 (which relate to licensing)”.

Section 11B

(1) Section 28 (licensing of registered trade mark) is amended as follows.

(2) After subsection (4) insert—

(5) The proprietor of a registered trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in the licence with regard to—

(a) its duration,

(b) the form covered by the registration in which the trade mark may be used,

(c) the scope of the goods or services for which the licence is granted,

(d) the territory in which the trade mark may be affixed, or

(e) the quality of the goods manufactured or of the services provided by the licensee.

Section 11C

(1) Section 30 is amended as follows.

(2) After subsection (1) insert—

(1A) Except so far as the licence provides otherwise a licensee may only bring proceedings for infringement of the registered trade mark with the consent of the proprietor (but see subsections (2) and (3)).

(3) In subsection (2), for “A licensee is entitled, unless his licence or any licence through which his interest is derived, provides otherwise, to” substitute “An exclusive licensee may”.

(4) In subsection (3) after “If the proprietor” insert “mentioned in subsection (2)” and before “licensee” insert “exclusive”.

(5) In subsection (4), after “by virtue of this section” insert “or with the consent of the proprietor or pursuant to the licence”.

(6) After subsection (6), insert—

(6A) Where the proprietor of a registered trade mark brings infringement proceedings, a licensee who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.

Section 11D

(1) Section 32 (application for registration) is amended as follows.

(2) In subsection (2)(d) after “mark” insert “, which is capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor”.

Section 11E

Section 38 (publication, opposition proceedings and observations) is amended as follows.

(2) After subsection (2) insert—

(2A) Where a notice of opposition is filed on the basis of one or more earlier trade marks or other earlier rights—

(a) the rights (if plural) must all belong to the same proprietor;

(b) the notice may be filed on the basis of part, or the totality, of the goods or services in respect of which the earlier right is protected or applied for.

(2B) A notice of opposition may be directed against part or the totality of the goods or services in respect of which the contested mark is applied for.

Section 12

In section 40 (registration), in subsection (1), for the words from “since he accepted” onwards substitute “since the application was accepted that the registration requirements (other than those mentioned in section 5(1), (2) or (3)) were not met at that time.”.

Section 12A

(1) Section 41 (registration: supplementary provisions) is amended as follows.

(2) After subsection (1)(a) insert—

(aa) the division of a registration of a trade mark into several registrations;

(3) In subsection (3)(b), after each reference to “application” insert “or registration” and after “applications” insert “or registrations”.

Section 12B

(1) Section 43 (renewal of registration) is amended as follows.

(2) After subsection (3) insert—

(3A) If a request for renewal is made or the renewal fee is paid in respect of only some of the goods or services for which the trade mark is registered, the registration is to be renewed for those goods or services only.

Section 12C

(1) Section 46 (revocation of registration) is amended as follows.

(2) In subsection (2)—

(a) after “a form” insert “(the “variant form”)”; and

(b) after “in which it was registered” insert “(regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)”.

Section 13

(1) Section 47 (grounds for invalidity of registration) is amended as follows.

(2) At the beginning of subsection (2) insert “Subject to subsections (2A) and (2G),”.

(3) After subsection (2) insert—

(2ZA) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 5(6).

(2A) The registration of a trade mark may not be declared invalid on the ground that there is an earlier trade mark unless—

(a) the registration procedure for the earlier trade mark was completed within the period of five years ending with the date of the application for the declaration,

(b) the registration procedure for the earlier trade mark was not completed before that date,

(c) the use conditions are met.

(2B) The use conditions are met if—

(a) the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with their consent in relation to the goods or services for which it is registered—

(i) within the period of 5 years ending with the date of application for the declaration, and

(ii) within the period of 5 years ending with the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application where, at that date, the five year period within which the earlier trade mark should have been put to genuine use as provided in section 46(1)(a) has expired, or

(b) it has not been so used, but there are proper reasons for non-use.

(2C) For these purposes—

(a) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor), and

(b) use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes.

(2D) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(2DA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(2E) Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services.

(2F) Subsection (2A) does not apply where the earlier trade mark is a trade mark within section 6(1)(c).

(2G) An application for a declaration of invalidity on the basis of an earlier trade mark must be refused if it would have been refused, for any of the reasons set out in subsection (2H), had the application for the declaration been made on the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application.

(2H) The reasons referred to in subsection (2G) are—

(a) that on the date in question the earlier trade mark was liable to be declared invalid by virtue of section 3(1)(b), (c) or (d), (and had not yet acquired a distinctive character as mentioned in the words after paragraph (d) in section 3(1));

(b) that the application for a declaration of invalidity is based on section 5(2) and the earlier trade mark had not yet become sufficiently distinctive to support a finding of likelihood of confusion within the meaning of section 5(2);

(c) that the application for a declaration of invalidity is based on section 5(3)(a) and the earlier trade mark had not yet acquired a reputation within the meaning of section 5(3).

(4) After subsection (5) insert—

(5A) An application for a declaration of invalidity may be filed on the basis of one or more earlier trade marks or other earlier rights provided they all belong to the same proprietor.

Section 13A

(1) Section 49 (collective marks) is amended as follows.

(2) For subsection (1) substitute—

(1) A collective mark is a mark which is described as such when it is applied for and is capable of distinguishing the goods and services of members of the association which is the proprietor of the mark from those of other undertakings.

(1A) The following may be registered as the proprietor of a collective mark—

(a) an association of manufacturers, producers, suppliers of services or traders which has the capacity in its own name to enter into contracts and to sue or be sued; and

(b) a legal person governed by public law.

Section 13B

(1) Section 50 (certification marks) is amended as follows.

(2) In subsection (1) for “indicating” substitute “which is described as such when the mark is applied for and indicates”.

Section 13C

In the heading of Part II and in the italic heading before section 51, for “Community” substitute “European Union”.

Section 13D

For section 51 (meaning of “Community trade mark”) substitute—

Meaning of “European Union trade mark”

(51) In this Act—

“European Union trade mark” has the meaning given by Article 1(1) of the European Union Trade Mark Regulation; and

“the European Union Trade Mark Regulation” means Regulation ( EU ) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark (as it had effect immediately before exit day)

Section 14

Omit section 52 (power to make provision in connection with Community Trade Mark Regulation).

Section 14A

Before the italic heading before section 53, insert—

Certain trade marks registered as European Union trade marks to be treated as registered trade marks

(52A) Schedule 2A makes provision for European Union trade marks (including certain expired and removed marks) to be treated as registered trade marks with effect from exit day and about certain applications for a European Union trade mark made before exit day.

Section 15

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Section 15A

After section 54 (and before the italic heading before section 55), insert—

Certain international trade marks protected in the European Union to be treated as registered trade marks

(54A) Schedule 2B makes provision for international trade marks protected in the European Union (including certain expired marks) to be treated as registered trade marks with effect from exit day and about certain applications for the protection of an international trade mark in the European Union and transformation applications made before exit day.

Section 16

In section 55(1) (the Paris Convention)―

(a) in paragraph (a), at the end omit “and”;

(b) after paragraph (a) insert—

(aa) “the WTO agreement” means the Agreement establishing the World Trade Organisation signed at Marrakesh on 15th April 1994, and

(c) in paragraph (b), at the end insert “or to that Agreement”.

(2) In section 55(2), after “Paris Convention” insert “or the WTO agreement”.

Section 17

(1) In section 56(1) (protection of well-known trade marks)—

(a) after “Paris Convention” insert “or the WTO agreement” ;

(b) in paragraph (a), after “national of” insert “the United Kingdom or” ;

(c) in paragraph (b), after “establishment in,” insert “the United Kingdom or” .

(2) In section 56(2)—

(a) after “Paris Convention” insert “or the WTO agreement” ;

(b) for the words from “his mark” to “confusion” substitute—

the well known trade mark—

(a) in relation to identical or similar goods or services, where the use is likely to cause confusion, or

(b) where the well known trade mark has a reputation in the United Kingdom and the use of the other trade mark—

(i) is without due cause, and

(ii) takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the well known trade mark

(3) After section 56(2) insert—

(2A) Subsection (2)(b) applies irrespective of whether the goods or services in relation to which the other trade mark is used are identical with, similar to or not similar to those for which the well known trade mark is entitled to protection.

Section 17A

In sections 57(2) and (3) (national emblems etc. of Convention countries) and 58(2) (emblems etc. of certain international organisations) after “Paris Convention” insert “or the WTO agreement” .

Section 18

In section 59 (notification under Article 6ter of the Convention), at the end insert―

(5) Any reference in this section to Article 6 ter of the Paris Convention shall be construed as including a reference to that Article as applied by the WTO agreement.

Section 18A

Omit section 60 (acts of agent or representative: Article 6septies).

Section 18B

At the end of Part 2 insert—

Nice Classification

Similarity of goods and services

(60A)

(1) For the purposes of this Act goods and services—

(a) are not to be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification;

(b) are not to be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.

(2) In subsection (1), the “Nice Classification” means the system of classification under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, which was last amended on 28 September 1979 .

Section 19

Omit section 61 (stamp duty).

Section 20

In section 68(2) (costs and security for costs), at the end insert―

(c) in the Isle of Man, in the same way as an order of the court.

Section 21

In section 75 (the court)―

(a) in paragraph (a), at the end omit “and”;

(b) after paragraph (b) insert—

and

(c) in the Isle of Man, the High Court of Justice of the Isle of Man.