The Trade Marks (Amendment) Regulations 2022 have been debated in the House of Commons. The rules will amend section 56 of the Trade Marks Act 1994 to:
- Give holders of unregistered “well-known trade marks” (as defined in Article 6bis of the Paris Convention) the right to prohibit the use of a conflicting trademark on dissimilar goods or services. At present, this right only relates to use on similar goods or services.
- Extend the provisions on well-known marks to the UK. At present, they only apply for the benefit of nationals of countries signatory to the Paris Convention other than the UK, and to those who are domiciled in, or have a real and effective industrial or commercial establishment in, such countries. This exclusion arises from section 55 of the Trade Marks Act 1994, which defines “Convention country” for the purposes of the Act.
These changes will ensure compliance with Article 240 of the Trade and Co-operation Agreement (TCA). In that Article, the UK and the EU committed to applying WIPO’s Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, published in 2000. In the Commons debate, the minister responsible for intellectual property, Dean Russell, said that the government estimated that the UK provisions on well-known marks were relied on about 12 times a year and that many of those cases did not reach court.
There is no definition of “Well Known Mark” in the Paris Convention mind. Simply that it is “a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark [being used]”