Famous marks afforded extended protection

United Kingdom

The UK trademark legislation has been amended to broaden the protection afforded to registered trademarks with a reputation. The changes, which will take effect tomorrow, will bring UK law into line with the European Court of Justice's (ECJ) decisions in Davidoff and adidas (see Anti-dilution protection extended by ECJ and ECJ reaffirms its interpretation of the EU anti-dilution provision).

Sections 5(3) and 10(3) of the Trademarks Act 1994 (implementing Articles 4(4)(a) and 5(2) of the Community Trademark Directive) currently afford the owner of a trademark with a reputation the express right in certain circumstances to prevent third parties from using the same or similar mark in relation to goods and services that are dissimilar to the goods or services for which the famous mark is registered. The owner of a famous mark can only rely on a likelihood of confusion to enforce its rights against the use of a similar or identical mark on similar or identical goods or services. If the alleged infringer can show that the public is not confused, then the benefit of the provisions falls away.

In Davidoff, the ECJ found that notwithstanding the express wording of Article 5(2), that provision could not be interpreted in a way that would give marks with a reputation less protection where a similar or identical sign is used for identical or similar goods than where such a sign is used for dissimilar goods. This, the ECJ ruled, would be contrary to the intention of the directive to give marks with a reputation specific protection against impairment of their distinctive character or repute.

Further, as implementation of Articles 4(4)(a) and 5(2) was optional, the ECJ held that member states were entitled to extend the protection to cover identical or similar goods and services as well. In adidas, the ECJ went a little further, holding that where a member state had chosen to implement Articles 4(4)(a) and 5(2) - as is the case of the United Kingdom -, it was bound to grant the extended protection.

For a discussion of changes to the trademark rules also coming into force tomorrow, see New trademark rules get the go-ahead.

Tim Smith, Ashurst, London

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