| Guvnor

Enforced by: IPO, Trading Standards
Status: Amended (in force with amendments)
Penalty ceiling: Imprisonment 2 of 20 obligations carry an unlimited fine. 5 carry different penalties and 13 have no criminal penalty — flagged in the list below.

Does it bind you?

Business-side roles with duties under this instrument.

Any Person7 Director or Officer1 Applicant1

Plus 11 duties on the regulator, Crown ministers and public bodies — folded into the section list below.

Other Acts binding the same actors

If a role above is yours, these are the other instruments that most often bind it.

Any Person — also bound by 2684 other Acts

Human Medicines Regulations 2012 184 duties

Merchant Shipping Act 1995 144 duties

Insolvency (England and Wales) Rules 2016 104 duties

Communications Act 2003 92 duties

Road Traffic Act 1988 92 duties

Director or Officer — also bound by 482 other Acts

Insolvency (England and Wales) Rules 2016 162 duties

Companies Act 2006 126 duties

Insolvency Act 1986 77 duties

The Large and Medium-sized Companies and Groups (Accounts and Reports) Regulations 2008 68 duties

Building Societies Act 1986 32 duties

Applicant — also bound by 325 other Acts

Insolvency (England and Wales) Rules 2016 46 duties

Human Medicines Regulations 2012 42 duties

The Land Registration Rules 2003 25 duties

Regulation (EU) No 1178/2011 (Aircrew) 20 duties

Value Added Tax Regulations 1995 18 duties

What it requires

Sections creating concrete business duties or carrying penalties, grouped as the instrument is structured. Titles link to the source text — blue means you’re leaving for legislation.gov.uk.

Part 1

Registered trade marks

5 of 61 sections shown

s.019 Order as to disposal of infringing goods, material or articles. Regulated

Other duties (1) — Crown / regulator

Courts must decide on the disposal of seized infringing goodsTribunal / Court

s.025 Registration of transactions affecting registered trade mark. Regulated

s.032 Application for registration. Regulated

Submit a complete application for trade mark registrationApplicant

s.037 Examination of application. Regulated

Other duties (1) — Crown / regulator

IPO must examine trade mark applications and allow for amendmentsStatutory regulator

s.038 Publication, opposition proceedings and observations. Regulated

Other duties (1) — Crown / regulator

Registrar must publish trade mark applications and notify of any observationsStatutory regulator

56 other sections in this Part — procedural and definitional

s.001 Trade marks.

s.002 Registered trade marks.

s.003 Absolute grounds for refusal of registration.

s.004 Specially protected emblems.

s.005 Relative grounds for refusal of registration.

s.005 Grounds for refusal relating to only some of the goods or services

s.006 Meaning of “earlier trade mark”.

s.006 Raising of relative grounds in opposition proceedings in case of non-use

s.007 Raising of relative grounds in case of honest concurrent use.

s.008 Power to require that relative grounds be raised in opposition proceedings.

s.009 Rights conferred by registered trade mark.

s.010 Infringement of registered trade mark.

s.010 Right to prevent goods entering the UK without being released for free circulation

s.010 Prohibition on the use of a trade mark registered in the name of an agent or representative

s.011 Limits on effect of registered trade mark.

s.011 Non-use as defence in infringement proceedings

s.012 Exhaustion of rights conferred by registered trade mark.

s.013 Registration subject to disclaimer or limitation.

s.014 Action for infringement.

s.015 Order for erasure, &c. of offending sign.

s.016 Order for delivery up of infringing goods, material or articles.

s.017 Meaning of “infringing goods, material or articles”.

s.018 Period after which remedy of delivery up not available.

s.020 Jurisdiction of sheriff court or county court in Northern Ireland.

s.021 Threats of infringement proceedings

s.021 Actionable threats

s.021 Permitted communications

s.021 Remedies and defences

s.021 Professional advisers

s.021 Supplementary: pending registration

s.021 Supplementary: proceedings for delivery up etc.

s.022 Nature of registered trade mark.

s.023 Co-ownership of registered trade mark.

s.024 Assignment, &c. of registered trade mark.

s.026 Trusts and equities.

s.027 Application for registration of trade mark as an object of property.

s.028 Licensing of registered trade mark.

s.029 Exclusive licences.

s.030 General provisions as to rights of licensees in case of infringement.

s.031 Exclusive licensee having rights and remedies of assignee.

s.033 Date of filing.

s.034 Classification of trade marks.

s.035 Claim to priority of Convention application.

s.036 Claim to priority from other relevant overseas application.

s.039 Withdrawal, restriction or amendment of application.

s.040 Registration.

s.041 Registration: supplementary provisions.

s.042 Duration of registration.

s.043 Renewal of registration.

s.044 Alteration of registered trade mark.

s.045 Surrender of registered trade mark.

s.046 Revocation of registration.

s.047 Grounds for invalidity of registration.

s.048 Effect of acquiescence.

s.049 Collective marks.

s.050 Certification marks.

Part 2

European Union trade marks and international matters

1 of 14 sections shown

s.059 Notification under Article 6ter of the Convention. Regulated

Other duties (1) — Crown / regulator

IPO must maintain a public register of protected state and international symbolsStatutory regulator

13 other sections in this Part — procedural and definitional

s.051 Meaning of “European Union trade mark”

s.052 Power to make provision in connection with European Union Trade Mark Regulation.

s.052 Certain trade marks registered as European Union trade marks to be treated as registered trade marks

s.053 The Madrid Protocol.

s.054 Power to make provision giving effect to Madrid Protocol.

s.054 Certain international trade marks protected in the European Union to be treated as registered trade marks

s.055 The Paris Convention.

s.056 Protection of well-known trade marks: Article 6bis.

s.057 National emblems, &c. of Convention countries: Article 6ter.

s.058 Emblems, &c. of certain international organisations: Article 6ter.

s.060 Acts of agent or representative: Article 6septies.

s.060 Similarity of goods and services

s.061 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ..

Part 3

Administrative and other supplementary provisions

11 of 39 sections shown

s.063 The register. Regulated

Other duties (1) — Crown / regulator

Registrar must maintain a public register of trade marksStatutory regulator

s.067 Information about applications and registered trade marks. Regulated

Other duties (1) — Crown / regulator

Registrar must provide trade mark information and access to documentsStatutory regulator

s.071 Registrar’s annual report. Regulated

Other duties (1) — Crown / regulator

Registrar must publish an annual report on trade mark activities and financesStatutory regulator

s.074 Registrar’s appearance in proceedings involving the register. Regulated

Other duties (1) — Crown / regulator

Registrar must participate in court proceedings involving trade mark validityStatutory regulator

s.081 The trade marks journal. Regulated

Other duties (1) — Crown / regulator

Registrar must publish trade mark applications in a journalStatutory regulator

s.084 Unregistered persons not to be described as registered trade mark agents. Prosecution

Misrepresent as a registered trade mark agentAny Person

Unlimited fine

s.092 Unauthorised use of trade mark, &c. in relation to goods. Imprisonment

Use a registered trade mark without the owner’s consentAny Person

s.094 Falsification of register, &c. Imprisonment

Make false entry in trade mark registerAny Person

s.095 Falsely representing trade mark as registered. Prosecution

Falsely represent a trade mark as registeredAny Person

Fine up to £1,000

s.097 Forfeiture: England and Wales or Northern Ireland. Regulated

Other duties (1) — Crown / regulator

Courts may order forfeiture and destruction of infringing goodsTribunal / Court

s.098 Forfeiture: Scotland. Prosecution

Other duties (1) — Crown / regulator

Courts in Scotland may order forfeiture of infringing goodsTribunal / Court

Unlimited fine

28 other sections in this Part — procedural and definitional

s.062 The registrar.

s.064 Rectification or correction of the register.

s.065 Adaptation of entries to new classification.

s.066 Power to require use of forms.

s.068 Costs and security for costs.

s.069 Evidence before registrar.

s.070 Exclusion of liability in respect of official acts.

s.072 Registration to be prima facie evidence of validity.

s.073 Certificate of validity of contested registration.

s.075 The court.

s.076 Appeals from the registrar.

s.077 Persons appointed to hear and determine appeals.

s.078 Power of Secretary of State to make rules.

s.079 Fees.

s.080 Hours of business and business days.

s.082 Recognition of agents.

s.083 The register of trade mark attorneys

s.083 Regulation of trade mark attorneys

s.085 Power to prescribe conditions, &c. for mixed partnerships and bodies corporate.

s.086 Use of the term “trade mark attorney”.

s.087 Privilege for communications with registered trade mark agents.

s.088 Power of registrar to refuse to deal with certain agents.

s.089 Infringing goods, material or articles may be treated as prohibited goods.

s.090 Power of Commissioners of Customs and Excise to make regulations.

s.091 Power of Commissioners for Revenue and Customs to disclose information.

s.092 Search warrants

s.093 Enforcement function of local weights and measures authority.

s.096 Supplementary provisions as to summary proceedings in Scotland.

Part 4

Miscellaneous and general provisions

5 of 13 sections shown

s.099 Unauthorised use of Royal arms, &c. Prosecution

Unauthorised use of Royal arms or royal emblemsAny Person

Fine up to £500

s.099 Reproduction of trade marks in dictionaries, encyclopaedias etc. Regulated

Correct trade mark reproductions in dictionaries and reference worksAny Person

s.101 Offences committed by partnerships and bodies corporate. Imprisonment

Personal liability for trade mark offences by company officers or partnersDirector or Officer

10 years imprisonment · amended 1 time (opens in a new tab)

s.103 Minor definitions.

amended 2 times (opens in a new tab)

s.104 Index of defined expressions.

amended 19 times (opens in a new tab)

8 other sections in this Part — procedural and definitional

s.100 Burden of proving use of trade mark.

s.102 Adaptation of expressions for Scotland.

s.105 Transitional provisions.

s.106 Consequential amendments and repeals.

s.107 Territorial waters and the continental shelf.

s.108 Extent.

s.109 Commencement.

s.110 Short title.

Schedules

0 of 133 shown

133 other schedules

s.004 Consequential amendments

s.005 Repeals and revocations

s.sch001 Collective marks

s.sch001 The provisions of this Act apply to collective marks subject...

s.sch001 (1) An amendment of the regulations governing the use of...

s.sch001 The following provisions apply in relation to an authorised user...

s.sch001 (1) The following provisions (which correspond to the provisions of...

s.sch001 Apart from the grounds of revocation provided for in section...

s.sch001 Apart from the grounds of invalidity provided for in section...

s.sch001 In relation to a collective mark the reference in section...

s.sch001 (1) Notwithstanding section 3(1)(c), a collective mark may be registered...

s.sch001 (1) A collective mark shall not be registered if the...

s.sch001 (1) An applicant for registration of a collective mark must...

s.sch001 (1) A collective mark shall not be registered unless the...

s.sch001 (1) The registrar shall consider whether the requirements mentioned in...

s.sch001 The regulations shall be published and notice of opposition may...

s.sch001 The regulations governing the use of a registered collective mark...

s.sch002 Certification marks

s.sch002 The provisions of this Act apply to certification marks subject...

s.sch002 The regulations governing the use of a registered certification mark...

s.sch002 (1) An amendment of the regulations governing the use of...

s.sch002 The assignment or other transmission of a registered certification mark...

s.sch002 The following provisions apply in relation to an authorised user...

s.sch002 In infringement proceedings brought by the proprietor of a registered...

s.sch002 Apart from the grounds of revocation provided for in section...

s.sch002 Apart from the grounds of invalidity provided for in section...

s.sch002 In relation to a certification mark the reference in section...

s.sch002 (1) Notwithstanding section 3(1)(c), a certification mark may be registered...

s.sch002 A certification mark shall not be registered if the proprietor...

s.sch002 (1) A certification mark shall not be registered if the...

s.sch002 (1) An applicant for registration of a certification mark must...

s.sch002 (1) A certification mark shall not be registered unless—

s.sch002 (1) The registrar shall consider whether the requirements mentioned in...

s.sch002 The regulations shall be published and notice of opposition may...

s.sch002a EUROPEAN UNION TRADE MARKS

s.sch002a A trade mark registered as an existing EUTM to be treated as registered under this Act

s.sch002a Reputation of a comparable trade mark (EU)

s.sch002a Rights conferred by registered trade mark

s.sch002a Effect of claim of priority

s.sch002a Effect of seniority claim

s.sch002a Determination of invalidity and liability to revocation in relation to claims of seniority

s.sch002a Procedure for declaration that trade mark would have been liable to be revoked or declared invalid

s.sch002a Assignment of an existing EUTM not registered on IP completion day

s.sch002a Effect of a licence of an existing EUTM

s.sch002a Effect of a security interest in an existing EUTM

s.sch002a Continuity of rights in relation to a comparable trade mark (EU)

s.sch002a Opt out

s.sch002a Existing EUTM: pending proceedings

s.sch002a Existing EUTM: effect of injunction

s.sch002a Existing EUTM: effect of invalidity or revocation

s.sch002a Registration of certain expired European Union trade marks

s.sch002a Renewal of an expired EUTM

s.sch002a Application of Part

s.sch002a Application for registration under this Act based upon an existing EUTM application

s.sch002a Right to claim seniority where seniority has been claimed by an existing EUTM application

s.sch002a Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 26

s.sch002a Restoration of a European Union trade mark to the EUTM Register

s.sch002a Restoration of an application for a European Union trade mark

s.sch002a Entries to be made in the register in relation to a comparable trade mark (EU)

s.sch002a Interpretation

s.sch002a Comparable trade mark (EU) which derives from an EU Collective Mark or EU Certification Mark

s.sch002a Renewal of a comparable trade mark (EU) which expires within six months after IP completion day

s.sch002a Restoration of a comparable trade mark (EU)

s.sch002a Raising of relative grounds in opposition proceedings in case of non-use

s.sch002a Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (EU)

s.sch002a Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (EU)

s.sch002b INTERNATIONAL TRADE MARKS PROTECTED IN THE EUROPEAN UNION

s.sch002b An international trade mark protected in the European Union to be treated as registered under this Act

s.sch002b Reputation of a comparable trade mark (IR)

s.sch002b Rights conferred by registered trade mark

s.sch002b Effect of disclaimer

s.sch002b Effect of claim of priority

s.sch002b Effect of seniority claim

s.sch002b Determination of invalidity and liability to revocation in relation to claims of seniority

s.sch002b Procedure for declaration that trade mark would have been liable to be revoked or declared invalid

s.sch002b Assignment of an existing IR(EU) not registered on IP completion day

s.sch002b Effect of a licence of an existing IR(EU)

s.sch002b Effect of a security interest in an existing IR(EU)

s.sch002b Opt out

s.sch002b Continuity of rights in relation to a comparable trade mark (IR)

s.sch002b Existing IR(EU): pending proceedings

s.sch002b Existing IR(EU): effect of injunction

s.sch002b Registration of certain expired international trade marks

s.sch002b Renewal of an expired IR(EU)

s.sch002b Renewal of an expired IR(EU): territorial extension under Article 3ter(1)

s.sch002b Renewal of an expired IR(EU): territorial extension under Article 3ter(2)

s.sch002b Interpretation

s.sch002b Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register prior to IP completion day

s.sch002b Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register on or after IP completion day

s.sch002b Entries to be made in the register in relation to a comparable trade mark (IR)

s.sch002b Right to claim seniority where seniority has been claimed by an existing ITM application or an existing request for EU extension

s.sch002b Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 30

s.sch002b Transformation applications

s.sch002b Application for registration based upon a cancelled international registration

s.sch002b Interpretation

s.sch002b Comparable trade mark (IR) which derives from a mark treated as an EU Collective Mark or EU Certification Mark

s.sch002b Renewal of a comparable trade mark (IR) which expires within six months after IP completion day

s.sch002b Restoration of a comparable trade mark (IR)

s.sch002b Raising of relative grounds in opposition proceedings in case of non-use

s.sch002b Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (IR)

s.sch002b Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (IR)

s.sch003 Transitional provisions

s.sch003 (1) In this Schedule— “existing registered mark” means a trade...

s.sch003 (1) An application for registration of a mark under the...

s.sch003 (1) In the case of a pending application for registration...

s.sch003 The registrar may exercise the powers conferred by rules under...

s.sch003 Section 35 of this Act (claim to priority of Convention...

s.sch003 (1) Where before the commencement of this Act a person...

s.sch003 (1) Section 42(1) of this Act (duration of original period...

s.sch003 An application under section 35 of the 1938 Act (alteration...

s.sch003 (1) An application under section 26 of the 1938 Act...

s.sch003 (1) An application under section 32 or 34 of the...

s.sch003 (1) Regulations governing the use of an existing registered certification...

s.sch003 (1) Existing registered marks (whether registered in Part A or...

s.sch003 (1) For the purposes of this Schedule the Sheffield register...

s.sch003 A certificate given before the commencement of this Act under...

s.sch003 (1) Rules in force immediately before the commencement of this...

s.sch003 (1) A condition entered on the former register in relation...

s.sch003 (1) Sections 9 to 12 of this Act (effects of...

s.sch003 Section 16 of this Act (order for delivery up of...

s.sch003 (1) Section 30 (general provisions as to rights of licensees...

s.sch003 The provisions of section 23 of this Act (co-ownership of...

s.sch003 (1) Section 24 of this Act (assignment or other transmission...

s.sch003 (1) Sections 28 and 29(2) of this Act (licensing of...

s.sch004 (1) References in statutory provisions passed or made before the...

s.sch004 (1) The Patents and Designs Act 1907 is amended as...

s.sch004 (1) The Patents, Designs, Copyright and Trade Marks (Emergency) Act...

s.sch004 In the Trade Descriptions Act 1968, in section 34 (exemption...

s.sch004 (1) Section 22 of the Solicitors Act 1974 (preparation of...

s.sch004 In Part III of Schedule 1 to the House of...

s.sch004 In Schedule 3 to the Restrictive Trade Practices Act 1976...

s.sch004 In Part I of Schedule 1 to the Tribunals and...

Help complying

Guvnor’s practical routes through this instrument.

Growing your business

Plan your growth, find support and funding, and expand to new sites, partners and markets

Grow your retail business

Scale your retail business - expand online, open new locations, build your team, and manage increased compliance as you grow

Grow your tech business

Scale your tech business - funding, international expansion, investment, and preparing for exit

Start a retail business - compliance essentials

Put the legal basics in place before you open a shop: consumer rights, pricing, weights and measures, product safety, data, accessibility, staff …

Respond to a Trading Standards investigation

What to do if Trading Standards has contacted you, visited your premises, or conducted a test purchase. Covers understanding their powers, identifying …

Expanding your childcare business

Grow your childcare business through multi-site expansion, franchising, acquisitions, or building strong Ofsted inspection outcomes

Avoid selling counterfeit goods

Selling goods that carry a trade mark without the owner's permission is a criminal offence, with up to 10 years in prison, …

Check your business name is available

Before you commit to a business name, check it is free at Companies House, on the UK trademark register, and as a …

Choose how to protect your intellectual property

Copyright and unregistered design right protect your work automatically, but they only stop copying. To get exclusive rights in a brand name, …

How business domain names work

You never own a domain name outright. You hold it from a registrar for as long as you keep paying, and anyone …

Protecting Your Software Intellectual Property

Your source code is protected by copyright automatically, at no cost. A patent, lasting up to 20 years, is available only where …

Register a trademark

Registering a UK trademark with the Intellectual Property Office gives you exclusive rights to your business name, logo or slogan for the …

7 more guides that reference this instrument

Deal with IP infringement Franchise your business Identify your intellectual property License your IP to others Meet your professional, scientific and technical regulatory duties Prevent underage sales in your shop Protect your copyright

Connected legislation

Instruments made under this Act. They carry the detail the Act delegates.

Trade Marks (Earlier Trade Marks) Regulations 2008 SI 2008

Duty extraction and severity labels are Guvnor’s analysis of the instrument, not the instrument itself. Always verify against the linked source text.

Trade Marks Act 1994

Does it bind you?

Other Acts binding the same actors

What it requires

Registered trade marks

European Union trade marks and international matters

Administrative and other supplementary provisions

Miscellaneous and general provisions

Schedules

Help complying

Growing your business

Grow your retail business

Grow your tech business

Start a retail business - compliance essentials

Respond to a Trading Standards investigation

Expanding your childcare business

Avoid selling counterfeit goods

Check your business name is available

Choose how to protect your intellectual property

How business domain names work

Protecting Your Software Intellectual Property

Register a trademark

Connected legislation