# Trade Marks (Amendment) Act 1984 (repealed 31.10.1994), Paragraph 12

Extent: E+W+S+N.I.

(1) Section 22 (assignability and transmissibility of trade marks) shall be modified as follows.
(2) In subsection (1) the words from “Notwithstanding” to “contrary” and the words “and shall be deemed always to have been” shall be omitted.
(3) In subsection (2) the words “and shall be deemed always to have been” and the words “or was registered, as the case may be” shall be omitted.
(4) In subsection (3) the words “or was” wherever they occur shall be omitted.
(5) For subsection (4) there shall be substituted the following subsection—
“(4) Notwithstanding anything in subsection (1) to (3) of this section a mark shall not be assignable or transmissible in a case in which as a result of an assignment or transmission there would in the circumstances subsist, whether under the common law or by registration, exclusive rights in more than one of the persons concerned to the use, in relation to—
(a) the same services,
(b) the same description of services, or
(c) services and goods or descriptions of services and goods which are associated with each other,
of marks nearly resembling each other or of identical marks, if, having regard to the similarity of the services or the association of the goods and services, or description of goods and services, and to the similarity of the marks, the use of the marks in exercise of those rights would be likely to deceive or cause confusion:
Provided that, where a mark is assigned or transmitted in such a case, the assignment or transmission shall not be deemed to be invalid under this subsection if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to services for use in the United Kingdom, in relation to services for use in the same country or territory outside the United Kingdom or in relation to services available for acceptance in the United Kingdom (wherever they are to be used).”
(6) In subsection (5), for the words “the goods and” there shall be substituted the words “the services or the association of the services and goods or descriptions of services and goods and to the similarity”.
(7) In subsection (6) the words “on or after the appointed day” shall be omitted in both places where they occur and, in the words before the proviso, for the words following “by registration” there shall be substituted the words—
“(a) an exclusive right in one of the persons concerned to the use of the mark limited to use in relation to services for use or services available for acceptance in a place or places in the United Kingdom; and
(b) an exclusive right in another of the persons concerned to the use of a mark identical with or nearly resembling the mark referred to in paragraph (a) above in relation to—
(i) the same services,
(ii) the same description of services, or
(iii) goods which are associated with those services or services of that description.
limited to use in relation to services for use, services available for acceptance or goods to be sold or otherwise traded in, in another place or places in the United Kingdom.”
(8) In subsection (7), for the words “in those goods is made, on or after the appointed day” there shall be substituted the words “of providing those services is made”.

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Source: https://www.legislation.gov.uk/ukpga/1984/19/schedule/1/paragraph/12 (the official version)
Page: https://openlegislation.uk/trade-marks-amendment-act-1984-repealed-31101994/schedule-1/paragraph-12
Contains public sector information licensed under the Open Government Licence v3.0. Source: legislation.gov.uk, The National Archives.