UK Trade Mark Law

Introduction

Trade mark law in the United Kingdom is governed by the Trade Marks Act 1994 (TMA 1994), which implemented the EU Trade Marks Directive and harmonised UK trade mark law with the law of other EU member states. Following Brexit, UK trade mark law has diverged from EU law in certain respects, but the fundamental framework remains consistent. The TMA 1994 provides for the registration of trade marks and confers on the proprietor the exclusive right to use the mark in relation to the goods or services for which it is registered.

Definition of a Trade Mark

Section 1 of the TMA 1994 defines a trade mark as any sign capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor. A trade mark may consist of words, designs, letters, numerals, colours, the shape of goods or their packaging, or sounds.

The sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. This distinctiveness requirement is the core function of a trade mark: to identify the origin of goods or services.

Registration

Trade marks are registered by the UK Intellectual Property Office (UKIPO) following examination of the application. The application must specify the goods or services for which registration is sought, classified in accordance with the Nice Classification system.

The UKIPO examines the application for: absolute grounds for refusal (whether the mark is capable of distinguishing the applicant’s goods or services) and relative grounds (whether the mark conflicts with earlier marks). If the application satisfies the requirements, the mark is published for opposition. Third parties may oppose registration within two months of publication.

Absolute Grounds for Refusal

Section 3 of the TMA 1994 sets out the absolute grounds for refusal of registration. A mark may not be registered if: it is devoid of distinctive character; it consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of goods or services; it consists exclusively of signs which have become customary in the current language or established practices of the trade; or it is contrary to public policy or accepted principles of morality.

A mark may acquire distinctiveness through use — if, before the date of application, the mark has in fact become distinctive of the applicant’s goods or services as a result of the use made of it.

Relative Grounds for Refusal

Section 5 of the TMA 1994 sets out the relative grounds for refusal: the mark is identical with an earlier trade mark and the goods or services are identical; the mark is identical with an earlier mark and the goods or services are similar, and there exists a likelihood of confusion on the part of the public; or the mark is similar to an earlier mark and the goods or services are identical or similar, and there exists a likelihood of confusion.

Protection is also available for earlier marks with a reputation: the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

Infringement

Section 10 of the TMA 1994 defines trade mark infringement. A person infringes a registered trade mark if they use in the course of trade a sign which is: identical with the trade mark and used in relation to identical goods or services; identical or similar to the mark and used in relation to identical or similar goods or services, where there exists a likelihood of confusion; or identical or similar to the mark and used in relation to goods or services which are not similar to those for which the mark is registered, where the mark has a reputation and the use takes unfair advantage of or is detrimental to the mark.

Passing Off

The common law tort of passing off provides protection for unregistered trade marks and business goodwill. Passing off protects the goodwill of a business from misrepresentation by another trader that causes damage. The classic formulation of the tort is Lord Diplock’s five characteristics in Erven Warnink BV v J Townend & Sons (Hull) Ltd (1979): a misrepresentation, made by a trader in the course of trade, to prospective customers, which is calculated to injure the business or goodwill of another trader, and which causes damage to the business or goodwill.

The House of Lords in Reckitt & Colman Products Ltd v Borden Inc (1990) (the Jif Lemon case) confirmed the three elements of passing off: goodwill or reputation attached to the goods or services; a misrepresentation by the defendant leading to deception; and damage to the claimant’s goodwill.

EU Exhaustion

Following Brexit, the UK adopted a separate regime for exhaustion of trade mark rights. Under the Trade Marks Act 1994, the proprietor’s rights are exhausted in respect of goods put on the market in the UK or the European Economic Area, but not in respect of goods put on the market outside those territories. The UK has not adopted a unilateral exhaustion regime and continues to recognise EEA exhaustion.

Conclusion

UK trade mark law under the Trade Marks Act 1994 provides a framework for the registration and protection of trade marks. The absolute and relative grounds for refusal, the infringement provisions, and the common law tort of passing off protect the distinctive function of trade marks and the goodwill of businesses.