UK Trade mark law in detail

Despite the fact that UK trade mark law, contained in the Trade Marks Act 1994, was established to implement the EU Trademarks Directive (2008/95/EC), there is a number of key differences between the UK and the other EU member states. These differences go against the reasons for unified trade mark laws throughout Europe.

These key differences include:

• The law of passing off to protect unregistered rights
• The dispute resolution service which applies to ‘.uk’ domain names
• Provisions relating to unjustified threats of trade mark infringement proceedings
• The Civil Procedure rules, which can affect all aspects of a case throughout proceedings
• The operation of the Company Names Tribunal which deals with opportunistic company names registrations
• The operation of the Intellectual Property Enterprise Court (IPEC), which involves caps on costs which the court may award to successful party.

Unregistered trade marks are protected indirectly through the common law tort of passing off. This tort endeavours to protect the reputation and goodwill of one trader from misrepresentations from another. The key to a successful case of passing off is the establishment of goodwill, misrepresentation and damage. Goodwill is the existence of a reputation in relation to the brand or mark. The mark need not be well known or have a large number of customers. Goodwill is established on a case to case basis, dependant on the facts. For a misrepresentation to be made, a false representation that can lead customers to believe the actions of the defendant are linked to those of the claimant has to have been made. The last point to be proven is damage. The most common cause is financial damage through loss of sale but damage can also come in the form of damage through association.

An action in passing off can be expensive as it has a high evidential burden, however it does give claimants a route in which to enforce their mark if action through the conventional registered mark route is not available.

Another key difference that is not established through the rest of the EU member states, is the presence of a dispute resolution service in relation to ‘.uk’ domain names. Nominet operates this service which allows a trade mark owner to file a complaint against a registration that can be abusive to their mark or brand.

A law that is unique to the UK is that in relation to unjustified threats. This allows a recipient of a threatening letter can ignite proceedings for unjustified threats, seeking either a declaration that shows the threats are unjustifiable, an injunction to prevent further threats or damages in respect of lass suffered by the threats. The law as it stands is drafted in a way in which a letter of inquiry can constitute unjustified threats. This issue is under consideration in view to allow an appropriate amendment.

Lastly, the Company Names Tribunal has been developed to prevent any registration of a company’s name that will affect the goodwill of another. The tribunal provides a cost effective remedy to allow a company to protect their name, which is in most circumstances their brand.

It is clear that while UK trade mark law is based on the EU directive, it has exclusive elements that set it apart from the rest of the Europe. These key differences can indicate a more developed system but does go against the inclusive system that the implementation of the directive aimed to achieve.

By Ellis Sweetenham