Changes for well known marks (WKM)
Updated 19 December 2022
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Introduction
A well known mark (‘WKM’) is one that is well known in the UK and which the general public commonly knows about. For example, ‘Google’ or ‘British Airways’. Trade mark law gives special protection to these because of their recognition and reputation. This protection can apply regardless of whether the mark is registered in the UK or not.
This guidance covers changes to the Trade Marks Act 1994 (‘TMA’) for WKMs made by the Trade Marks (Amendment) Regulations 2022 (‘TM Regs’).
It gives you an overview of the upcoming amendments to trade mark law, but it is not a substitute for legal advice. A consolidated version of the Trade Marks Act 1994 will be updated later this year, once the changes have come into force.
Background to the changes
The UK protects WKMs through a combination of trade mark legislation and common law. The changes within the TM Regs are technical amendments to the TMA in two specific areas. Firstly, section 56 of the TMA will change so it applies to UK based holders of WKMs. Secondly, additions at section 56(2) and section 56(2A) will mean holders of unregistered WKMs have a new remedy to protect their mark. These changes will ensure clearer compliance with the World Intellectual Property Organization’s ‘Joint Recommendation on the Protection of Well-Known Marks’.
Timing
The changes will come into force on 27 December 2022.
Provisions in Section 56 of the TMA will apply to UK-based holders of WKMs
Currently the WKM provisions may only be relied upon by holders of a mark connected with a Paris Convention country. This excludes marks held by UK owners.
The TM Regs will change the law to ensure all the provisions for WKMs in section 56 will now apply to the UK. This amendment also feeds into the definition of “earlier trade mark”. Therefore, the relative grounds provisions which permit owners of WKMs to challenge a trade mark will now also extend to UK holders.
From a practical perspective, UK-based individuals and businesses already have other provisions within the TMA to enforce their rights. This includes where they hold a registered well known mark and through passing off. However, we are taking this opportunity to extend the drafting to include the UK within scope.
A new remedy within section 56(2) and 56(2A) for the holders of unregistered WKMs
This will provide the right for holders of unregistered WKMs to prohibit the use of a conflicting trade mark where it is being used on dissimilar goods or services. This change builds on existing provisions to stop the use of a conflicting trade mark where it is being used on the same or similar goods or services.
For example, the new law will mean that the holder of an unregistered WKM, such as a famous brand like ‘Rolls-Royce’, can rely on WKM provisions where its name was unjustly being used, not only on cars and similar goods, but also on sports equipment or even domestic cleaning products. This applies where that use takes unfair advantage of the distinctive character or repute of the ‘Rolls-Royce’ mark.
Practical impact of the changes
These TM Regs make no changes to the rules surrounding the IPO’s Tribunal processes (e.g. fees or forms). Holders of WKMs may use these new remedies, where applicable, through the existing processes.