Section 32 Trade Marks Act 1967

Section 32 of the Trade Marks Act 1967 is about Defensive registration of well-known invented words. It is under ‘Use and non-use’ of the Act. It provides as follows:

(1) Where a trade mark consisting of an invented word or invented words has, as respects any goods in respect of which it is registered and in relation to which it has been used (in this subsection referred to as “the familiar goods”), become so well known that its use in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the familiar goods, the trade mark may, on the application in the prescribed manner of the proprietor registered in respect of the familiar goods, be registered in his name in respect of those other goods, as a defensive trade mark, notwithstanding that the proprietor registered in respect of the familiar goods does not use or propose to use the trade mark in relation to those other goods, and notwithstanding anything in section 31 of
this Act; and while so registered, the trade mark shall not be liable to be taken off the register in respect of those goods under section 31 of this Act.

(2) The registered proprietor of a trade mark-
(a) may apply for its registration in respect of any goods as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods otherwise than as a defensive trade mark; or
(b) may apply for its registration in respect of any goods otherwise than as a defensive trade mark notwithstanding that it is already registered in his name in
respect of those goods as a defensive trade mark, in place, in either case, of the existing registration.

(3) A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor, shall, notwithstanding that the respective registrations are in respect of different goods, be deemed to be, and shall be registered as, associated trade marks, and section 28 of this Act shall apply to them accordingly.

(4) On application by any person concerned to the court or, at the option of the applicant and subject to section 56 of this Act, to the Registrar, the registration of a trade mark as a defensive trade mark-
(a) may be cancelled on the ground that the requirements of subsection (I) of this
section are no longer satisfied in respect of any goods in respect of which the
trade mark is registered in the name of the same proprietor otherwise than as a defensive trade mark; or
(b) may be cancelled as respects any goods in respect of which it is registered as a defensive trade mark on the ground that there is no longer any likelihood that
the use of the trade mark in relation to those goods would be taken as giving
the indication mentioned in the said subsection (1).

(5) The Registrar may at any time cancel the registration as a defensive trade mark of a trade mark of which there is no longer any registration in the name of the same proprietor otherwise than as a defensive trade mark.

(6) Except as otherwise expressly provided in this section, the provisions of this Act shall apply in respect of the registration of trade marks as defensive trade marks and of trade marks so registered as they apply in other cases.

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