News & Insight

Trade marks February 13, 2023
UK protection for well known trade marks extended

UK protection for well known trade marks extended

Well known trade marks like COCA-COLA and GOOGLE are recognised internationally in the Paris Convention.

Paris Convention members – most countries in the world including the UK and the EU – are obligated to protect through their national laws trade marks that are well known to the public in their respective jurisdictions.

The protection for well known marks in the UK is enshrined in section 56 of the UK Trade Marks Act 1994.

However, as originally drafted (and some might say rather irrationally), the protections in section 56 were only available to owners of well known trade marks who resided abroad.

Owners of trade marks that were well known in the UK but who had their sole place of business in the UK were excluded from the protections in section 56.

In fact, this made little difference technically because UK owners could protect their well known trade marks, if registered in the UK through other provisions in the UK Act and if unregistered through the common law of passing off.

Nevertheless, when the UK left the EU, it agreed to remedy this omission and also to extend the protections available to trade marks that are well known in the UK to cover unauthorised uses not only on the same and similar goods and services but also in relation to dissimilar goods and services.

This extended protection against dissimilar goods and services wrongly bearing a well known trade mark had been recommended by the World Intellectual Property Organisation, which is the guardian of the Paris Convention and other world intellectual property agreements.

In fulfilment of its promise, the UK enacted appropriate changes to the protections for well known trade marks in section 56 of the UK Act that came into force from the end of December 2022.

UK-based owners of registered or unregistered trade marks that are well known in the UK can now take advantage of section 56 to enforce their trade marks.

Further, the protection for all trade marks that are well known in the UK now extends to prevent third party use in relation to dissimilar goods and services.

This piece was written and researched by Tristan Morse. The trade marks team at Humphreys Law offers a full trade marks prosecution, maintenance and enforcement service.  If you have any queries with respect to any of the matters raised above, then please do contact a member of the trade mark team.

All the thoughts and commentary that HLaw publishes on this website, including those set out above, are subject to the terms and conditions of use of this website.  None of the above constitutes legal advice and is not to be relied upon.  Much of the above will no doubt fall out of date and conflict with future law and practice one day.  None of the above should be relied upon.  Always seek your own independent professional advice.

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