Trade Marks Act 1994

The UK Trade Marks Act 1994 protects the online use of trade marks and introduces criminal offences against trade mark infringement.

For example, during web site design and when using electronic communications, such as email, ensuring your own trade mark protection as well as avoiding using another’s trade mark is essential.

The Trade Marks Act 1994 makes new provision for registered trade marks, implementing Council Directive No. 89/104/EEC of 21st December 1988 to approximate the laws of the Member States relating to trade marks; makes provision in connection with Council Regulation (EC) No. 40/94 of 20th December 1993 on the Community trade mark; gives effect to the Madrid Protocol Relating to the International Registration of Marks of 27th June 1989, and to certain provisions of the Paris Convention for the Protection of Industrial Property of 20th March 1883, as revised and amended.

Offences

The Trade Marks Act 1994 has created a number of offences as regards unauthorised use of trade mark in relation to goods.

S92.-(1) a person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor

(a) applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trade mark, or

(b) sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears, such a sign, or

(c) has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b).

(2) a person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor-

(a) applies a sign identical to, or likely to be mistaken for, a registered trade mark to material intended to be used-

(i) for labelling or packaging goods,

(ii) as a business paper in relation to goods, or

(iii) for advertising goods,

or

(b) uses in the course of a business material bearing such a sign for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods, or

(c) has in his possession, custody or control in the course of a business any such material with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b).

(3) a person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor-

(a) makes an article specifically designed or adapted for making copies of a sign identical to, or likely to be mistaken for, a registered trade mark, or

(b) has such an article in his possession, custody or control in the course of a business, knowing or having reason to believe that it has been, or is to be, used to produce goods, or material for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods.

(4) a person does not commit an offence under this section unless

(a) the goods are goods in respect of which the trade mark is registered, or

(b) the trade mark has a reputation in the united kingdom and the use of the sign takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the trade mark.

(5) It is a defence for a person charged with an offence under this section to show that he believed on reasonable grounds that the use of the sign in the manner in which it was used, was not an infringement of the registered trade mark.

Penalties

A person guilty of an offence under section 92 is liable-

(a) on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both: (b) on conviction on indictment to a fine or imprisonment for a term not exceeding ten years, or both.

Specimen charges

Specimen Charges/Summonses: Trade Marks Act 1994 (a) on the ... Day of... 19.. at ... with a view to gain for yourself or another or with intent to cause loss to another and without the consent of the proprietor you applied to goods or their packaging a sign namely......... identical to or likely to be mistaken for a registered trade mark contrary to section 92(1) (a) of the Trade Marks act 1994 (b) on the... Day of... 19.. at... with a view to gain for yourself or another or with intent to cause loss to another and without the consent of the proprietor you sold or let for hire offered or exposed for sale or hire or distributed goods namely......... which bear, or the packaging of which bears such a sign the registered trade mark of ............. contrary to section 92(1 )(b) of the Trade Marks Act 1994

Supervision and enforcement

Further information

Visit the European Union resources on Intellectual Property

Reference

Trade Marks Act 1994

UK/1994/C/26