Trade Marks Act 1994

요약

The Trade Marks Act 1994 is the principal UK statute governing the registration and protection of trade marks. It replaced the Trade Marks Act 1938 and implemented the First EU Trade Marks Directive (89/104/EEC), harmonising UK law with European standards. Under the Act a trade mark is any sign capable of distinguishing the goods or services of one undertaking from those of other undertakings, including words, personal names, designs, letters, numerals, colours, sounds, and shapes. Registration confers the exclusive right to use the mark in relation to the registered goods or services and to prevent third parties from using identical or similar signs where there is a likelihood of confusion. Registration is effected by application to the UK Intellectual Property Office (UKIPO), which examines the application for absolute grounds (distinctiveness, descriptiveness, deceptiveness) and relative grounds (conflict with earlier marks). Once registered, a trade mark lasts for 10 years from the date of filing and may be renewed indefinitely for further 10-year periods. Infringement is established under sections 10(1) to 10(3), covering use of identical signs on identical goods, use of similar signs where confusion is likely, and use which takes unfair advantage of or is detrimental to a mark with a reputation. The Act also creates criminal offences for counterfeiting (s.92) and provides remedies including injunctions, accounts of profits, and damages.

핵심 포인트

• Definition — A trade mark is any sign capable of being represented in the register in a manner which enables the registrar and the public to determine the clear and precise subject matter of the protection afforded (s.1, as amended by the Trade Marks Regulations 2018 SI 2018/825 removing the graphical representation requirement)
• Absolute grounds for refusal (s.3) — Signs devoid of distinctive character, descriptive of the goods or services, customary in trade, contrary to public policy or morality, or deceptive marks may not be registered
• Relative grounds for refusal (s.5) — Registration is refused if the mark is identical or similar to an earlier mark for identical or similar goods/services where there is a likelihood of confusion, or if the mark would take unfair advantage of or be detrimental to the distinctive character or repute of an earlier mark with a reputation
• Duration — Registration lasts 10 years from filing date; renewable indefinitely for further 10-year periods on payment of renewal fees (s.42-43)
• Infringement — s.10(1): identical sign for identical goods/services; s.10(2): similar sign/goods with likelihood of confusion; s.10(3): use of a mark identical or similar to a mark with a reputation that takes unfair advantage of or is detrimental to that mark
• Defences — Honest concurrent use; use of own name or address; purely descriptive use of characteristics of goods/services; comparative advertising; exhaustion of rights for goods put on the market in the EEA by the proprietor (s.11-12)
• Criminal offences — s.92: unauthorised use of a trade mark with a view to gain for oneself or another, or with intent to cause loss to another, including applying the mark, selling, or possessing goods bearing the mark; maximum 10 years imprisonment
• Revocation — A mark may be revoked for non-use for 5 or more years, or if it has become generic or misleading (s.46)

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