UK Act of Parliament 1994 United Kingdom

Trade Marks Act 1994

What this means for your business

10 obligations
6 penalties
2 can imprison
9 guides
Enforced by
IPO
Applies to
United Kingdom
On this page
10 compliance obligations, 9 practical guides across 4 topics
Read full text on legislation.gov.uk

What you must do

10 compliance obligations under this legislation — 2 can result in imprisonment.

Management duties 1

Respond to trademark forfeiture notices and avoid infringing goods

Unlimited fine

If any of your products, packaging or labelling display a sign that is identical to or could be confused with a registered trade mark, a Scottish court can order those items to be seized and destroyed. You must make sure you have permission to use any trade mark and, if you are served a notice of forfeiture, you must attend the hearing and either contest the order or comply with its terms.

Trader/Business s.98 IPO When you sell, import or use goods, packaging, labelling or articles that …

Other requirements 1

Add registered trade‑mark notice in reference works when requested

If you publish a dictionary, encyclopaedia or similar reference and a trademark owner tells you in writing that the way you show their mark could make it look like a generic name, you must add a notice that it is a registered trade mark. Do this promptly, and for printed books no later than the next edition. Failure can lead to a court order to amend or destroy the offending copies.

Trader/Business s.99A IPO A trademark owner sends you a written request and the reproduced mark …

Offences and prohibitions 5

Falsely represent a trade mark as registered

Fine up to £1,000

If you claim that a trade mark is registered in the UK – or that it covers certain goods or services – when this is not true, and you know (or ought to know) the claim is false, you commit an offence. Conviction results in a fine of up to £1,000. The case is dealt with in the Magistrates' Court only.

Any Person s.95 IPO

Make false entry in trade mark register

2 years imprisonment

If you or your business deliberately put a false entry into the UK trade‑mark register, or create or submit a document that pretends to be a genuine register entry when it is not, you commit a criminal offence. On conviction you face an unlimited fine and/or imprisonment – up to two years if tried on indictment, or up to six months if dealt with summarily.

Any Person s.94 IPO

Misrepresent as a registered trade mark agent

Unlimited fine

If you or your business use the words “registered trade mark agent” or “registered trade mark attorney” in your name, marketing or any other description, or hold yourself out as a registered trade mark agent, while you are not actually on the official register, you are committing a criminal offence. On conviction in the Magistrates' Court you face an unlimited fine and the matter must be brought within a year of the breach.

Any Person s.84 IPO

Unauthorised use of Royal arms or royal emblems

Fine up to £500

If your business displays the Royal arms, a badge that looks like them, or any title or emblem that makes people think you are authorised by, employed by or supplying the Queen or a member of the Royal family, without official permission, you are committing an offence. The offence is tried in the Magistrates' Court and can result in a fine of up to £500. No prison term is provided for this offence.

Any Person s.99 IPO

Use a registered trade mark without the owner’s consent

10 years imprisonment

If you apply, sell, hire out, advertise or otherwise handle goods (or their packaging, labelling, or advertising material) that bear a sign identical to or likely to be confused with a registered trade mark, without the owner’s permission, you commit an offence. The offence applies when the goods are those covered by the mark or the mark has a reputation in the UK. Conviction can lead to up to six months’ imprisonment and a fine on summary conviction, or up to ten years’ imprisonment and an unlimited fine on indictment.

Any Person s.92 IPO

Registration and licensing 3

Apply to register your trade mark

If you want legal protection for your brand, you must lodge a trade‑mark application with the registrar. The application must include your name and address, a clear description of the goods or services the mark will cover, a visual representation of the mark, and a statement that you are using it now or intend to use it. You also need to pay the appropriate registration and class fees.

Trader/Business s.32 IPO

Register any assignment, licence or security interest in a trade mark

When you sell, licence, mortgage or otherwise deal with a registered trade mark, you must tell the UK Intellectual Property Office and have the details entered on the trade‑mark register. If you don’t register the transaction, it won’t bind third parties and you lose certain legal protections, such as cost recovery in infringement cases.

Any Person s.25 IPO When you enter into a registrable transaction – e.g. assign a trade …

Reply to trademark examiner and amend application if required

If the trade marks office tells you that your trademark application does not meet the legal requirements, they will send you a notice and set a deadline. You must respond to that notice and, if needed, amend your application before the deadline or the application will be refused.

Trader/Business s.37 IPO Registrar informs you that the application does not meet the requirements

Penalties for non-compliance

6 penalties under this legislation. 2 can result in imprisonment. 4 carry an unlimited fine.

Prison risk

Make false entry in trade mark register

Unlimited fine and/or 2 years imprisonment

Either way s.94 Penalises: Make false entry in trade mark register
Prison risk

Use a registered trade mark without the owner’s consent

Unlimited fine and/or 10 years imprisonment

Either way s.92 Penalises: Use a registered trade mark without the owner’s …
Unlimited fine

Respond to trademark forfeiture notices and avoid infringing goods

Unlimited fine

s.98 Penalises: Respond to trademark forfeiture notices and avoid infringing …
Unlimited fine

Misrepresent as a registered trade mark agent

Unlimited fine

Summary only s.84 Penalises: Misrepresent as a registered trade mark agent
Fine

Falsely represent a trade mark as registered

Fine up to £1,000

Summary only s.95 Penalises: Falsely represent a trade mark as registered
Fine

Unauthorised use of Royal arms or royal emblems

Fine up to £500

Summary only s.99 Penalises: Unauthorised use of Royal arms or royal emblems

Practical guidance

Our guides explain how to comply with the requirements above.

Sections and provisions

134 classified provisions from this legislation.

14 Duties 6 Offences and penalties 25 Powers 29 Definitions 16 Exemptions

Duties 14

  • s.19 Order as to disposal of infringing goods, material or articles. and an order
  • s.25 Registration of transactions affecting registered trade mark. other person claiming
  • s.32 Application for registration.
  • s.37 Examination of application.
  • s.38 Publication, opposition proceedings and observations.
  • s.59 Notification under Article 6ter of the Convention. reference in this section
  • s.63 The register.
  • s.67 Information about applications and registered trade marks. request
  • s.71 Registrar’s annual report.
  • s.74 Registrar’s appearance in proceedings involving the register.
  • s.81 The trade marks journal.
  • s.97 Forfeiture: England and Wales or Northern Ireland.
  • s.98 Forfeiture: Scotland. person appearing
  • s.99A Reproduction of trade marks in dictionaries, encyclopaedias etc.

Offences and penalties 6

  • s.84 Unregistered persons not to be described as registered trade mark agents.
  • s.92 Unauthorised use of trade mark, &c. in relation to goods.
  • s.94 Falsification of register, &c.
  • s.95 Falsely representing trade mark as registered.
  • s.99 Unauthorised use of Royal arms, &c.
  • s.101 Offences committed by partnerships and bodies corporate.

Powers 25

  • s.8 Power to require that relative grounds be raised in opposition proceedings.
  • s.13 Registration subject to disclaimer or limitation.
  • s.15 Order for erasure, &c. of offending sign.
  • s.16 Order for delivery up of infringing goods, material or articles.
  • s.36 Claim to priority from other relevant overseas application.
  • s.39 Withdrawal, restriction or amendment of application.
  • s.41 Registration: supplementary provisions.
  • s.45 Surrender of registered trade mark.
  • s.52 Power to make provision in connection with European Union Trade Mark Regulation.
  • s.54 Power to make provision giving effect to Madrid Protocol.
  • s.55 The Paris Convention.
  • s.66 Power to require use of forms.
  • s.68 Costs and security for costs.
  • s.69 Evidence before registrar.
  • s.73 Certificate of validity of contested registration.
  • s.78 Power of Secretary of State to make rules.
  • s.80 Hours of business and business days.
  • s.83A Regulation of trade mark attorneys
  • s.83 The register of trade mark attorneys
  • s.85 Power to prescribe conditions, &c. for mixed partnerships and bodies corporate.
  • ... and 5 more powers

Definitions 29

  • s.1 Trade marks.
  • s.2 Registered trade marks.
  • s.4 Specially protected emblems.
  • s.5 Relative grounds for refusal of registration.
  • s.6 Meaning of “earlier trade mark”.
  • s.6A Raising of relative grounds in opposition proceedings in case of non-use
  • s.9 Rights conferred by registered trade mark.
  • s.10A Right to prevent goods entering the UK without being released for free circulation
  • s.10 Infringement of registered trade mark.
  • s.17 Meaning of “infringing goods, material or articles”.
  • s.21 Threats of infringement proceedings
  • s.21F Supplementary: proceedings for delivery up etc.
  • s.21E Supplementary: pending registration
  • s.21B Permitted communications
  • s.22 Nature of registered trade mark.
  • s.24 Assignment, &c. of registered trade mark.
  • s.28 Licensing of registered trade mark.
  • s.29 Exclusive licences.
  • s.33 Date of filing.
  • s.40 Registration.
  • ... and 9 more definitions

Exemptions 16

  • s.3 Absolute grounds for refusal of registration.
  • s.7 Raising of relative grounds in case of honest concurrent use.
  • s.11A Non-use as defence in infringement proceedings
  • s.11 Limits on effect of registered trade mark.
  • s.12 Exhaustion of rights conferred by registered trade mark.
  • s.21D Professional advisers
  • s.47 Grounds for invalidity of registration.
  • s.48 Effect of acquiescence.
  • s.57 National emblems, &c. of Convention countries: Article 6ter.
  • s.58 Emblems, &c. of certain international organisations: Article 6ter.
  • s.70 Exclusion of liability in respect of official acts.
  • s.86 Use of the term “trade mark attorney”.
  • s.89 Infringing goods, material or articles may be treated as prohibited goods.
  • s.93 Enforcement function of local weights and measures authority.
  • Schedule 2A EUROPEAN UNION TRADE MARKS
  • Schedule 2B INTERNATIONAL TRADE MARKS PROTECTED IN THE EUROPEAN UNION