U.K. TRADE MARKS ACT 1994
By:
Robert N. Dawbarn
London
The U.K. Trade Marks Act 1994 ("1994 Act") came into effect on October 31, 1994, replacing the Trade Marks Act of 1938 ("1938 Act"). One of the main purposes of the 1994 Act was to harmonize U.K. law with trademark law in other European Union Member States, thereby complying with E.C. Directive 89/104. The Directive should have been implemented in January 1993, but the United Kingdom failed to achieve this.
A trademark is redefined in Section 1 of the 1994 Act to mean "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings." This is a wider definition than that contained in the 1938 Act which permits, inter alia, registration of three-dimensional objects and which overrules the House of Lords' decision in the Coca-Cola case to refuse registration of the shape of the well-known bottle.
So broad is the new definition that it may be possible to register smells and tastes so long as they are "capable of being represented graphically." Companies with distinctively shaped products, or distinctive packaging also may apply for registration. However, one of the effects of Section 3 is to place limitations on the registration of shapes. If the shape results from the nature of the goods themselves, or if the goods are so shaped so as to provide a technical result, or if the shape gives substantial value to the goods, then registration will not be permitted.
Section 3 sets forth the grounds for absolute refusal of registration of a mark by the Trademarks Registry. In addition to limitations placed on the registration of shapes, marks will not be registered if they are "devoid of any distinctive character," or if the mark serves, in trade, to designate the kind, quality or quantity of goods or services, or if the mark consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade. Further, a mark will not be registered if it is contrary to public policy or to accepted principles of morality, or if it is of such a nature that it will deceive. Section 4 denies registration of specially protected emblems, such as the Royal arms and national flags, and Section 5 precludes from registration marks that are identical with an earlier trademark if the goods or services are also identical to the goods and services protected by the earlier trademark.
The 1994 Act has extended the rights of the trademark owner. The 1938 Act deemed infringement to have occurred when the mark was used in relation to goods or services for which it was registered. Now, the use of the mark in goods or services similar to those for which the mark was registered will constitute an infringement. The 1994 Act also provides that infringement may occur where a mark is used on goods or services dissimilar to those for which the mark was registered. However, the owner of the mark may consent to registration in any of the circumstances mentioned in this paragraph.
The application and registration process under Sections 37-44 of the 1994 Act remains similar to the procedure established by the 1938 Act. Applicants are given time to correct any objections of the registrar. If the application is acceptable to the registrar, in that it meets the definition set out in Section 1 and there are no conflicting marks already registered, then the application will be published to allow an interested party to oppose the registration. There is a prescribed time for notice of opposition to be given to the registrar. If no such notice is given, then the registrar will register the mark. Initially, the mark is registered for a period of ten years from the date of registration. Subject to the payment of a renewal fee, registration can be renewed for further periods of ten years.
The 1994 Act treats registered trademarks as personal property. As such, they may be dealt with in the same manner as other intellectual property, and may be sold, assigned (in writing) and, pursuant to Section 28, their use may be licensed to third parties (again in writing). Although the 1938 Act permitted such assignment and licensing, the 1994 Act makes both procedures easier to understand and easier to apply.
The proprietor of the mark may bring an action for infringement. In a case of infringement, a court may order the offending symbol or sign to be removed from the goods or, if this is not practicable, the court may order the destruction of the infringing goods, material or articles in question. The proprietor may also ask the court to order their delivery to him.
In addition to bringing U.K. trademark law into line with the trademark laws of other European Union Member States, the 1994 Act also permits registration of a Community Trade Mark. A Community Trade Mark is a trademark that will provide protection in all Member States without the need for separate national filings. The Community Trade Marks Office will be based in Alicante, Spain, and it seems likely that the Community Trade Mark Regulation will be brought into force in 1996, with filings accepted thereafter.
