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Words used as name or description of an article, substance or service

Trade Marks Act

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—(1) Subject to this section, the registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of a word or words which the trade mark contains, or of which it consists, as the name or description of an article, substance or service.(2) Subsection (3) shall have effect where —(a)there is a well-known and established use of the word or words as the name or description of the article, substance or service by a person or persons carrying on a trade in that article, substance or service, not being used in relation to goods or services connected in the course of trade with the proprietor or a registered user of the trade mark or, in the case of a certification trade mark, in relation to goods or services certified by the proprietor; or(b)the article or substance was formerly manufactured under a patent or the service formerly provided was a patented process, a period of two years or more after the cesser of the patent has elapsed, and the word is the only practicable name or description of the article, substance or service.(3) Where the facts mentioned in subsection (2)(a) or (b) are proved with respect to any word or words, then —(a)if the trade mark consists solely of that word or those words, the registration of the trade mark so far as regards registration in respect of the article or substance or of any goods of the same description, or of the services or of any services of the same description, as the case may require, shall be deemed for the purposes of section 39 to be an entry wrongly remaining on the register;(b)if the trade mark contains that word or those words and other matter, the court or the Registrar, in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance or any goods of the same description, or of the services or of any services of the same description, may, in the case of a decision in favour of the trade mark remaining on the register, require as a condition that the registered proprietor shall disclaim any right to the exclusive use of that word or those words in relation to that article or substance or any goods of the same description, or to the services or to any services of the same description, as the case may be, so however, that no such disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.(4) For the purposes of any other legal proceedings relating to a trade mark —(a)if the trade mark consists solely of that word or those words, all rights of the proprietor to the exclusive use of the trade mark; or(b)if the trade mark contains that word or those words and other matter, all rights of the proprietor to the exclusive use of that word or those words,in relation to the article or substance or to any goods of the same description, or to the services or to any services of the same description, as the case requires, whether under the common law or by registration, shall be deemed to have ceased on the date at which the use mentioned in subsection (2)(a) first became well-known and established, or at the expiration of the period of two years mentioned in subsection (2)(b).(5) No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as trade mark used in relation to goods in respect of a chemical substance or preparation.(6) Subsection (5) shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.

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