Act 17
Trademarks Act
2010
(2) Where it is proved that there is a well known and established
use of the word or words as the name or description of some activity
by a person or persons providing services which include that activity,
not being used in relation to services with the provision of which the
owner or a registered user of the trademark is connected, in the course
of business subsection (2) shall have effect.
(3) The facts mentioned in subsection (2) are proved with
respect to any word or words, where—
(a) the trademark consists solely of that word or those words,
the registration of the trademark, so far as regards
registration in respect of the activity in question, shall be
taken for the purposes of section 4 to be an entry wrongly
remaining on the register;
(b) the trademark contains that word or those words and other
matter, the registrar or the court, in deciding whether the
trademark shall remain on the register, so far as regards
registration in respect of the activity in question, may, in
case of a decision in favour of its remaining on the register,
require that the owner shall disclaim any right to the
exclusive use in relation to that activity of that word or
those words, that no disclaimer on the register shall affect
any rights of the owner of a trademark except where the
disclaimer arises out of the registration of the trademark in
respect of which the disclaimer is made; and
(c) for the purposes of any other legal proceedings relating to
the trademark if—
(i) the trademark consists solely of that word or those
words, all rights of the owner whether under the
common law or by registration, to the exclusive use of
the trademark in relation to the activity in question; or
(ii) the trademark contains that word or those words, all
rights of the owner to the exclusive use of that word or
those words,
shall be taken to have ceased on the date at which the use mentioned
in subsection (2) first became well known and established.
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