   
  
IP/N/1/GBR/20  
IP/N/1/GBR/T/14  
 
24 September 2020  
(20-6476)  Page: 1/2 
Council for Trade -Related Aspects of  
Intellectual Property Rights  Original: English  
 
NOTIFICATION OF LAWS AND REGULATIONS  
UNDER ARTICLE 63.2 OF THE TRIPS AGREEMENT  
UNITED KINGDOM : THE TRADE MARKS (PROOF OF USE, ETC.) REGULATIONS 2004  
Notifying Member  UNITED KINGDOM  
 
Details of the notified legal text  
 
Title The Trade Marks (Proof of Use, etc.) Regulations 2004  
Subject matter  Trademarks  
Nature of 
notification  [X] Main dedicated intellectual property law or regulation  
[  ] Other law or regulation  
Link to legal text* https://ip -documents.info/2020/IP/GBR/20_5579_00_e.pdf  
Notification status  [  ] First notification  
[X] Amendment or revision to notified legal text  
[  ] Replacement or consolidation of notified legal text(s)  
Previous 
notification(s) 
referred to  IP/N/1/GBR /T/1 
Brief description of the notified legal text  
 
The Regulations amend the Trade Marks Act 1994. A new section 6A is inserted. This requires an 
opponent who bases his opposition to the registration of a trade mark on certain earlier trade marks 
to show use of those marks. Consequential amendments made to section 40. New sub -sections 
inserted in section 47 (invalidity). These require an applicant who bases his application for a 
declaration of invalidity on certain earlier trade marks to also show use  of those marks. Further 
amendments reflect the decision of the European Court of Justice in Davidoff & Cie SA and Zino 
Davidoff SA v Gofkid Ltd, i.e. the proprietor of a trade mark has the right to prevent third parties 
from using an identical or similar trade mark in relation to goods or services which are similar or 
identical to those for which the ea rlier trade mark is registered where the earlier trade mark has a 
reputation and the use of that sign takes unfair advantage or is detrimental to the distin ctive 
character of that earlier trade mark.  
 
Language(s) of 
notified legal text English  
Entry into force  5 May 2007;  
http://www.legislation.gov.uk/uksi/2004/946/contents/made  
Other date    IP/N/1/GBR/20 • IP/N/1/GBR/T/14  
 
- 2 - 
 
  Notification details  
 
Submission date 
of notification  19 August 2020  
Other information  http://www.legislation.gov.uk/uksi/2004/946/contents/made  - 
Amends/replaces: The Trade Marks Act 1994  
 
Agency or 
authority 
responsible  UK Intellectual Property Office  
 
Concept House  
Cardiff Road  
Newport  
South Wales  
NP10 8QQ  
United Kingdom  
 
information@ipo.gov.uk  
 
0300 300 2000  
 
Outside the UK:  
+44 (0)1633 814000  
 
 
* Links are provided to texts of laws and regulations notified under the TRIPS Agreement in the form 
supplied by the Member concerned; the WTO Secretariat does not endorse or revise their content.   