Changes to UK trade mark law for well known marks

15th February 2023

The Trade Marks (Amendment) Regulations 2022 (SI 2022/1303) (the ‘Regulations’) came into force on 27 December 2022. The Regulations will amend the Trade Marks Act 1994 (the ‘TMA’) with changes to UK trade mark law for well known marks.

What are well known marks?

Well known marks are trade marks that are well known in the UK and which the general public commonly knows about. The TMA and UK common law combine to give these marks special protection on the basis that they are widely recognisable and benefit from a reputation. Interestingly, this protection can apply to qualifying trade marks even if not registered in the UK.

How is the TMA changing?

The Regulations have changed the TMA as follows:

1. Section 56(1) is amended such that the wording now applies to holders of well known marks who are nationals of the UK or are domiciled in or have a real and effective industrial or commercial establishment in the UK. Prior to the change, holders of well known marks connected with a Paris Convention country relied on this provision.
2. Section 56(2) is amended to extend the circumstances in which a holder of a well known mark is able to restrain by injunction the use of a trade mark in the UK. This subsection will now protect well known marks with a reputation in the UK, where the infringing mark is used without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or repute of the well known mark.
3. A new subsection 56(2A) is inserted such that section 56(2)(b) applies irrespective of whether the goods or services in relation to which the infringing mark is used are identical with, similar to or not similar to the goods or services applicable to the well known mark.

Comment

From a practical perspective, these changes do not have too much of an effect as holders of well known marks have been relying on the relative grounds provisions already set out in the TMA. However, these changes provide holders of well known marks with other avenues within the TMA to enforce their rights which can only be a good thing.  

The UKIPO has recently published useful guidance to explain how these changes will assist holders of well known marks, which has a summary below.

Holders of UK well known marks will now have the right to challenge marks that conflict with their well known mark. Section 56(1) (as amended) will ensure all provisions for well know marks under this section now apply to the UK. Previously, only holders of well known marks connected with a Paris Convention country could benefit from this provision (which excluded the UK).

Holders of UK well known marks can now prevent the use of conflicting marks on goods or services not related to the well known mark’s actual use. This means the scope of protection will be much broader for holders of well known marks. Until now, section 56(2) only prevented the use of identical or similar conflicting trade marks in relation to identical or similar goods or services, where the use is likely to cause confusion. The new section 56(2A) (and amended section 56(2)) now gives holders of unregistered well known marks the right to prohibit the unjust use of their well known marks on dissimilar goods or services.

If you have any questions on how this will impact you, please contact your usual Bird & Bird contact. For the UKIPO guidance in full, see: Guidance – Changes for well known marks.