Registrability
1) The Act defines a trademark as "any sign capable of being represented
graphically which is capable of distinguishing goods or services of one
undertaking from those of other undertakings". Under this definition,
three-dimensional shapes, sounds (and possibly smells), if capable of being
represented graphically, are now registrable.
2) A more liberal approach to registrability is adopted, so that marks which are capable of distinguishing the goods or services of a particular trader from those of others will now be registrable, whether through inherent distinctiveness or acquired distinctiveness resulting from use. It is therefore expected that surnames, geographical names and laudatory terms, which would have been rejected under the old Act, may be registrable under the new Act. We have been given to understand that at the outset the Trade Marks Registry will apply the minimum standard of registrability required under the old Act for registration in Part B of the Register for which the definition of what was protectible was whether a mark was "capable" of distinguishing the goods, this being the test for all registrations under this new Act. In the circumstances, we recommend that our clients consider re-filing applications for marks which were previously refused registration on the basis of non-distinctiveness.
3) An application filed under the old Act and not advertised as accepted before October 31, 1994 may be converted into one which may proceed under the new Act and thus take advantage of the more liberal standards of registrability; this option must be exercised by April 30, 1995. However, since an applicant who does convert his application in this manner will lose his priority, a search should be conducted to make certain that no intervening applications were filed in the interim period.
4) Parts A and B of the Register are unified so that all marks will be entered on a single Register.
5) Collective marks are now registrable.
2) A more liberal approach to registrability is adopted, so that marks which are capable of distinguishing the goods or services of a particular trader from those of others will now be registrable, whether through inherent distinctiveness or acquired distinctiveness resulting from use. It is therefore expected that surnames, geographical names and laudatory terms, which would have been rejected under the old Act, may be registrable under the new Act. We have been given to understand that at the outset the Trade Marks Registry will apply the minimum standard of registrability required under the old Act for registration in Part B of the Register for which the definition of what was protectible was whether a mark was "capable" of distinguishing the goods, this being the test for all registrations under this new Act. In the circumstances, we recommend that our clients consider re-filing applications for marks which were previously refused registration on the basis of non-distinctiveness.
3) An application filed under the old Act and not advertised as accepted before October 31, 1994 may be converted into one which may proceed under the new Act and thus take advantage of the more liberal standards of registrability; this option must be exercised by April 30, 1995. However, since an applicant who does convert his application in this manner will lose his priority, a search should be conducted to make certain that no intervening applications were filed in the interim period.
4) Parts A and B of the Register are unified so that all marks will be entered on a single Register.
5) Collective marks are now registrable.
Conflicting Prior Rights and Registrations
1) The possibilities for conflict with prior rights and registrations have
been enlarged and a broader range of registered marks may now bar registration.
Furthermore, a registered mark which has a reputation in the United Kingdom can
prevent the registration of an identical or similar mark covering dissimilar
goods or services if the use of the junior mark would take unfair advantage of
or be detrimental to the distinctive character or reputation of the senior
mark; this provision introduces the concept of "dilution" into UK law for the
first time and will presumably benefit the owners of well-known marks.
2) Although any prior conflicting right may be overcome by a consent (and the Registrar may no longer refuse to accept a consent in the public interest), a mark may not be registered if the use thereof would be prevented by any rule of law (in particular, the law of passing off) protecting an unregistered mark. If an opposition to an application is based on an unregistered mark, it will be necessary for the opposer to discharge a heavy burden of proof by showing that the reputation of his mark is such that he could prevent use of the mark being applied for by means of a common law action for passing off.
3) Where the proprietor of a prior mark or other earlier right has acquiesced for a continuous period of 5 years in the use of a registered mark, the right to seek the cancellation of the registration of the later mark or to take action against use of the later mark is lost, unless the later registration was obtained in bad faith.
4) The onus of proving non-use in an action for removal of a mark from the Register no longer falls on the party alleging non-use, but rather the proprietor of the mark has the burden to prove use during the relevant period.
2) Although any prior conflicting right may be overcome by a consent (and the Registrar may no longer refuse to accept a consent in the public interest), a mark may not be registered if the use thereof would be prevented by any rule of law (in particular, the law of passing off) protecting an unregistered mark. If an opposition to an application is based on an unregistered mark, it will be necessary for the opposer to discharge a heavy burden of proof by showing that the reputation of his mark is such that he could prevent use of the mark being applied for by means of a common law action for passing off.
3) Where the proprietor of a prior mark or other earlier right has acquiesced for a continuous period of 5 years in the use of a registered mark, the right to seek the cancellation of the registration of the later mark or to take action against use of the later mark is lost, unless the later registration was obtained in bad faith.
4) The onus of proving non-use in an action for removal of a mark from the Register no longer falls on the party alleging non-use, but rather the proprietor of the mark has the burden to prove use during the relevant period.
Practice and Procedure
1) A single application may cover several classes and applications may be
divided or combined after filing. Several registrations covering the same mark
may be merged.
2) It will no longer be possible to amend an inherently unregistrable mark during the course of the application procedure, so as to render the mark acceptable for registration. It will also not be possible to amend registrations.
3) Registrations classified under the old (pre-1938) Classification of Goods (Schedule III) will be reclassified to bring them into conformity with the current International Classification.
4) The Registrar is no longer obliged to refuse an application if it appears that the eventual registration would facilitate trafficking in the trademark.
5) Both the initial term of a registration and the renewal period are now 10 years.
6) The practice of requiring identical or similar marks covering the same or similar goods or services to be associated will cease.
7) The opposition term has been prolonged from 1 month to 3 months, but will not be extendible.
8) Appeals from the decision of the Registrar may be taken to the Court or to a person appointed by the Lord Chancellor.
2) It will no longer be possible to amend an inherently unregistrable mark during the course of the application procedure, so as to render the mark acceptable for registration. It will also not be possible to amend registrations.
3) Registrations classified under the old (pre-1938) Classification of Goods (Schedule III) will be reclassified to bring them into conformity with the current International Classification.
4) The Registrar is no longer obliged to refuse an application if it appears that the eventual registration would facilitate trafficking in the trademark.
5) Both the initial term of a registration and the renewal period are now 10 years.
6) The practice of requiring identical or similar marks covering the same or similar goods or services to be associated will cease.
7) The opposition term has been prolonged from 1 month to 3 months, but will not be extendible.
8) Appeals from the decision of the Registrar may be taken to the Court or to a person appointed by the Lord Chancellor.
Infringement and Counterfeiting
1) The protection afforded by a registration has been extended, so that a
registration may be infringed by the use of an identical or confusingly similar
mark not only in relation to the goods or services specifically covered in the
registration (as was the case under the old Act) but also in relation to
similar goods or services.
2) The Act also provides protection where the infringing use is made in respect of dissimilar goods or services and the registered mark has a reputation in the United Kingdom and the infringing use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the senior mark. Statutory recognition has thus been given for the first time under U.K. law to a well-known mark, as defined in the Paris Convention, even if the mark is not being used in the United Kingdom.
3) The unauthorized oral use of another's registered mark to sell goods or services may now constitute an infringement, thus making it possible to take action against, for example, street vendors.
4) Counterfeiting and possibly certain types of trademark infringements may be punishable by imprisonment for up to 10 years.
5) Where a person threatens another unjustifiably with proceedings for infringement of a registered trademark, the aggrieved party may seek an injunction to restrain the former. It should be noted that, although this provision is new with respect to trademarks, it already applies to patents and registered designs.
6) Comparative advertising will not constitute an infringement, provided it is honest and not misleading.
2) The Act also provides protection where the infringing use is made in respect of dissimilar goods or services and the registered mark has a reputation in the United Kingdom and the infringing use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the senior mark. Statutory recognition has thus been given for the first time under U.K. law to a well-known mark, as defined in the Paris Convention, even if the mark is not being used in the United Kingdom.
3) The unauthorized oral use of another's registered mark to sell goods or services may now constitute an infringement, thus making it possible to take action against, for example, street vendors.
4) Counterfeiting and possibly certain types of trademark infringements may be punishable by imprisonment for up to 10 years.
5) Where a person threatens another unjustifiably with proceedings for infringement of a registered trademark, the aggrieved party may seek an injunction to restrain the former. It should be noted that, although this provision is new with respect to trademarks, it already applies to patents and registered designs.
6) Comparative advertising will not constitute an infringement, provided it is honest and not misleading.
Licensing and Assignment
1) Sub-licensing is specifically recognized.
2) Non-exclusive licensees will be allowed to institute infringement proceedings if the trademark owner fails to bring such an action within 2 months after being called upon to do so.
3) It will be possible to assign trademarks freely with or without goodwill in respect of all or some of the goods or services concerned, so that it will no longer be necessary to advertise the assignment of marks where the mark is in use and the assignment is without goodwill. Since the requirement to associate similar marks has been removed, it will be possible to assign such marks to different owners; however, in that event, the assigned marks could be vulnerable to attack if it can be shown that the use of the marks by different owners is likely to mislead the public.
4) Unless there is an agreement to the contrary with the trademark owner, failure to record a license will prevent a licensee from being able to bring an infringement suit and recover damages.
5) Procedures for the recordal of licenses and assignments have been simplified substantially.
2) Non-exclusive licensees will be allowed to institute infringement proceedings if the trademark owner fails to bring such an action within 2 months after being called upon to do so.
3) It will be possible to assign trademarks freely with or without goodwill in respect of all or some of the goods or services concerned, so that it will no longer be necessary to advertise the assignment of marks where the mark is in use and the assignment is without goodwill. Since the requirement to associate similar marks has been removed, it will be possible to assign such marks to different owners; however, in that event, the assigned marks could be vulnerable to attack if it can be shown that the use of the marks by different owners is likely to mislead the public.
4) Unless there is an agreement to the contrary with the trademark owner, failure to record a license will prevent a licensee from being able to bring an infringement suit and recover damages.
5) Procedures for the recordal of licenses and assignments have been simplified substantially.
In view of the new Act, which, in effect, places a greater duty of care and responsibility on trademark owners, we suggest that our clients review the marks that are not registered in the United Kingdom and consider whether these should now be registered. We recommend this course, not only because it may be possible to register marks which were not registrable under the old Act, but also because the United Kingdom has to a large extent moved to a first-to-file system, thus making it highly advisable for trademark owners to try and avoid a difficult and costly opposition based on prior use against a similar mark, by registering their marks before they are anticipated by others. We also recommend that trademark owners would be well advised to exercise an even higher sense of alertness than before, by making searches for prior rights before commencing use of a new mark and maintaining a watch for potentially conflicting applications and registrations in the names of third parties.
November 1994 Index