Section 1 Application of Trade Marks Act 1938 to service marks.

United Kingdom

F1(1)

Subject to subsection (2) below, the M1Trade Marks Act 1938 shall have effect with respect to service marks as it has effect with respect to trade marks (references to goods having effect as references to services).

(2)

The Act of 1938 shall have effect in relation to service marks as mentioned in Schedule 1 to this Act.

(3)

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F2

(4)

In consequence of the preceding provisions of this section, the M2Act of 1938 shall have effect, in cases where it applies otherwise than by virtue of the preceding provisions of this section, with the amendments specified in Schedule 2 to this Act.

C1(5)

The Act of 1938 shall be further amended as follows—

(a)

in section 2 (no action for infringement of unregistered mark) the words “goods as the goods of another person” shall be omitted ;

(b)

in section 68 (interpretation), after subsection (2) there shall be inserted the following subsections—

“(2A)
For the purposes of this Act goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in those services might be provided by the same business and so with descriptions of goods and descriptions of services.
(2B)
References in this Act to a near resemblance of marks are references to a resemblance so near as to be likely to deceive or cause confusion.”.

(6)

In the application by virtue of subsection (1) above of section 7 of the Act of 1938 (restrictions on exclusive right conferred by registration) the references in that section to the use of the mark by a person’s predecessors in title shall, as respects use before this Act comes into force, be construed as references to use by any predecessor of his in business.

F3(7)

In this Act “service mark” means a mark (including a device, name, signature, word, letter, numeral, or any combination thereof) used or proposed to be used in relation to services for the purpose of indicating, or so as to indicate, that a particular person is connected, in the course of business, with the provision of those services, whether with or without any indication of the identity of that person.

Annotations

Textual amendments

F1: S.1(1)(2) substituted by Patents, Designs and Marks Act 1986 (c. 39, SIF 91), s. 2(1)(a)
F2: S. 1(3), Sch. 1 paras. 1, 21, Sch. 2 para. 5 repealed by Patents, Designs and Marks Act 1986 (c. 39, SIF 91), s. 3(2), Sch. 3 Pt. II
F3: S.1(7) substituted by Patents, Designs and Marks Act 1986 (c. 39, SIF 91), s. 2(1)(b)

Marginal citations

M1: 1938 c. 22(91).
M2: 1938 c. 22(91).

Modifications

C1: The text of s. 1(5) is in the form in which it was originally enacted: it was not reproduced in Statutes in Force and does not reflect any amendments or repeals which may have been made prior to 1.2.1991.

Notes on the whole Act

Textual amendments

F1: Act repealed (31.10.1994) by 1999 c. 26, s. 106(2), Sch. 5; S.I. 1994/2550, art. 2