On 23/05/2013,
you requested for the version in force on 23/05/2013
incorporating all amendments published on or before 23/05/2013.
The closest version currently available is that of 02/07/2007.
Infringement proceedings
31.
—(1) An infringement of a registered trade mark is actionable by the proprietor of the trade mark.
(2) Subject to the provisions of this Act, in an action for an infringement, the types of relief that the Court may grant include the following:
(a)
an injunction (subject to such terms, if any, as the Court thinks fit);
(b)
damages;
(c)
an account of profits;
(d)
(3) When the Court awards any damages under subsection (2)(b), the Court may also make an order under subsection (2)(c) for an account of any profits attributable to the infringement that have not been taken into account in computing the damages.
[20/2004]
(4) Except as provided for in subsection (3), the types of relief referred to in paragraphs (b), (c) and (d) of subsection (2) are mutually exclusive.
[20/2004]
(5) In any action for infringement of a registered trade mark where the infringement involves the use of a counterfeit trade mark in relation to goods or services, the plaintiff shall be entitled, at his election, to —
(a)
damages and an account of any profits attributable to the infringement that have not been taken into account in computing the damages;
(b)
an account of profits; or
(c)
statutory damages —
(i)
not exceeding $100,000 for each type of goods or service in relation to which the counterfeit trade mark has been used; and
(ii)
not exceeding in the aggregate $1 million, unless the plaintiff proves that his actual loss from such infringement exceeds $1 million.
[20/2004]
(6) In awarding statutory damages under subsection (5)(c), the Court shall have regard to —
(a)
the flagrancy of the infringement of the registered trade mark;
(b)
any loss that the plaintiff has suffered or is likely to suffer by reason of the infringement;
(c)
any benefit shown to have accrued to the defendant by reason of the infringement;
(d)
the need to deter other similar instances of infringement; and
(e)
all other relevant matters.
[UK Trade Marks Act 1994, s. 14]
[20/2004]
32.
—(1) Subject to subsection (3), where a person is found to have infringed a registered trade mark, the Court may make an order requiring him —
(a)
to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control; or
(b)
if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction of the infringing goods, material or articles in question.
[20/2004]
(2) If an order under subsection (1) is not complied with, or it appears to the Court likely that such an order would not be complied with, the Court may order that the infringing goods, material or articles be delivered up to such person as the Court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be.
(3) Where a person who is found to have infringed a registered trade mark has in his possession, custody or control any counterfeit goods, the Court shall order that the counterfeit goods be delivered up to such person as the Court may direct for destruction if —
(a)
the plaintiff applies to the Court for such an order; and
(b)
the Court is of the view that there are no exceptional circumstances which justify the refusal of such an order.
[UK Trade Marks Act 1994, s. 15]
[20/2004]
33.
—(1) The Court may, in addition to any relief granted under sections 31 and 32 in any action for an infringement of a registered trade mark, order any infringing goods, material or articles in the possession of the defendant or before the Court to be delivered up to the plaintiff.
(2) No order shall be made under this section unless the Court also makes, or it appears to the Court that there are grounds for making, an order under section 34.
(3) A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this section shall, if an order under section 34 is not made, retain them pending the making of an order, or the decision not to make an order, under that section.
[Copyright 1988 Ed., s. 120]
34.
—(1) Where infringing goods, material or articles have been delivered up in pursuance of an order under section 33, an application may be made to the Court —
(a)
for an order that they be destroyed or forfeited to such person as the Court may think fit; or
(b)
for a decision that no such order should be made.
(2) In considering what order, if any, should be made, the Court shall have regard to —
(a)
whether other remedies available in an action for infringement of the registered trade mark would be adequate to compensate the plaintiff and protect his interest; and
(b)
the need to ensure that no infringing goods, material or articles are disposed of in a manner that would adversely affect the plaintiff.
(3) Notwithstanding subsection (2), where the infringing goods are counterfeit goods, the Court shall order that the goods be destroyed if —
(a)
the plaintiff applies to the Court for such an order; and
(b)
the Court is of the view that there are no exceptional circumstances which justify the refusal of such an order.
[20/2004]
(4) The Court shall issue directions as to the service of notice on persons having an interest in the goods, material or articles.
(5) Any person having an interest in the goods, material or articles is entitled —
(a)
to appear in proceedings for an order under this section, whether or not that person is served with notice; and
(b)
to appeal against any order made, whether or not that person appears in the proceedings.
(6) An order made under this section shall not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal.
(7) Subject to subsection (3), where there is more than one person interested in the goods, material or articles, the Court may direct that the goods, material or articles be sold, or otherwise dealt with, and the proceeds divided, and shall make any other order as it thinks just.
[20/2004]
(8) If the Court decides that no order should be made under this section, the person in whose possession, custody or control the goods, material or articles were before being delivered up, is entitled to their return.
[UK Trade Marks Act 1994, s. 19; Copyright 1988 Ed., s. 120A]
35.
—(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than —
(a)
the application of the mark to goods or to material used or intended to be used for labelling or packaging goods;
(b)
the importation of goods to which, or to the packaging of which, the mark has been applied; or
(c)
the supply of services under the mark,
any aggrieved person may bring proceedings for relief under this section.
(2) The relief which may be applied for is any of the following:
(a)
a declaration that the threats are unjustifiable;
(b)
an injunction against the continuance of the threats;
(c)
damages in respect of any loss he has sustained by the threats.
(3) The plaintiff is entitled to the relief referred to in subsection (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.
(4) If the defendant showed that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned, the plaintiff is nevertheless entitled to relief if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.
(5) The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section.
(6) Nothing in this section shall render an advocate and solicitor liable to an action under this section in respect of an act done by him in his professional capacity on behalf of a client.
[UK Trade Marks Act 1994, s. 21]
[20/2004]