TRADE MARK ACT 1994

The Trade Marks Act 1994 is the law governing trade marks within the United Kingdom and the Isle of Man. It implements EU Directive No. 89/104/EEC (The Trade Marks Directive) which forms the framework for the trade mark laws of all EU member states, and replaced an earlier law, the Trade Marks Act 1938.[1] Although the UK’s trade mark regime covers the Isle of Man, it does not extend to the Channel Islands which have their own trade mark registers.

The Act provides both civil and criminal law sanctions for the misuse of registered trade marks. Section 93 of the Act makes enforcement of the criminal sanctions the duty of the local Weights and Measures Authority (usually the Trading Standards department) and imports enforcement powers from the Trade Descriptions Act.

Similar criminal law provisions are written into the related Copyright Designs and Patents Act.

The UK Patent Office, which deals with trade mark registration, has recently implemented a national intelligence database, TellPat, which is available to enforcement officers.

Changes from 1938 Act

The introduction of new primary legislation for trade marks in 1994 enabled the government to make a number of changes beyond merely implementing the EU Directive. These include:

  • Removing the two-part registration system: under the 1938 Act, trademarks were registered into two distinct parts (Part A and B) with different distinctiveness requirements.
  • Allowing applications to multiple classes.
  • Ensuring the registration requirements for goods and services are as similar as possible.

The Act also provides for a defence of “honest” use of a natural name.

The Trade Mark Act (TMA) 1938 was said to have caused a ‘great deal of judicial frustration’, thus indicating a strong need for trade mark law reform. The provisions under the TMA 1938 were unclear resulting in a lack of clarity being provided to the judiciary when applying the law to individual cases. It was felt that modern commercial activities were not being catered for, such as character merchandising,and so it became apparent that change was needed. In 1988 the first harmonisation Trade Mark Directive 89/104/EEC (now replaced by 2008/95/EC) was introduced to harmonise trade mark law throughout the EU. In light of this, a number of proposals were set out in the White Paper ‘s ‘Reform of Trade Mark Law’ leading to the enactment of the Trade Mark Act (TMA) 1994. The Act was intended to implement the Directive by setting out the procedural and operational requirements which apply to trade mark’s and trade mark applications.

Aim of the Act

The aim of the TMA was to ensure that trade mark owners were given the protection they deserved by reforming the unsatisfactory provisions contained within the TMA 1938. The previous law was considered rather outmoded as it was unable to protect modern trademarks and the protection that was afforded to owners was extremely limited. It was thought that the TMA 1994 would ‘bring about a general modernisation of the law of trade marks in the UK’ so that trade mark owners were protected against the use of their marks by third parties who would benefit from their good reputation.

Main changes to the law

The TMA 1994 was considered to be the ‘first major overhaul of trade mark law since 1938’ on the basis that it significantly extended the protection available to trade mark owners. Section 1 of the Act made it possible for the registration of any mark that was ‘capable of graphical representation’ which meant that any mark or logo, such as slogans, designs, letters, shapes and straplines, would be capable of being registered.This section provided protection to trade mark owners that may otherwise have been unavailable to them under the previous law and widened the scope of the TMA 1938. The TMA, therefore, intended to change this by extending the definition of trade marks. Although it has always been the case that a trade mark action could be brought under the common law of passing off the TMA 1994 gives owners extended protection against the misuse of their marks by third parties which will inevitably limit the amount of passing off actions that are brought. The TMA 1994 also redresses the problems that were caused by the requirements under s.3 of the TMA 1938 for registration to be for particular goods falling within one of the 42 international standards of goods. If a trader wanted to register goods falling within several of the classes, separate applications would need to be filed for each class as signified in American Greeting’s Corp’s Application. Under the TMA 1994, however, a single application can now be made making it easier for trade mark owners to register their marks for different classes of goods.

Patents Act 1977

Why the Act was introduced

The Patent Act (PA) 1977 was introduced following recommendations from the Banks Committee in its report on the patent system and patent law in the UK. It was thought that by introducing the Act, UK patent law would be harmonised with the ‘European Patent Convention (EPC), the Community Patent Convention (CPC) and the Patent Co-Operation Treaty (PCT).’The implementation of the Act brought the UK into line with other European trading partners and ensured that the UK was adhering to its international obligations to ensure a more harmonised patent system was in place.

Aim of the Act

The aim of the Act was to establish ‘a new law of patents that would be applicable to existing and future patents and to give effect to certain international conventions on patents; and for connected purposes.’ The rights of patent owners were given extended protections so that they could make and sell their inventions regardless as to whether a third party developed the same invention. The Act also sought to rectify the problems that surrounded the rights of employers and employees in relation to the employee patentable inventions since it was said that such inventions had ‘been a matter of controversy over a long period.’

Main changes to the law

The enactment of the PA 1977 brought asignificant change to UK patent law as its provisions were said to have ‘framed the same effects in the UK as the corresponding provisions of the EPC, the CPC and the PCT’ as illustrated by section 130 (7) of the Act. Thus, it is provided for under section 1(1) of the Act that for an invention to be patentable it must be new, have an inventive step, be capable of industrial application and not be excluded by subsections (2) and (3). This is largely similar to Article 52(1) EPC which states that ‘European patents shall be granted for any new inventions which are susceptible of industrial application, which are new and which involve an inventive step.’ In view of this, it is clear that the PA 1977 was largely influenced by the provisions of the EPC which was deliberately conducted so that British patent law could be brought into line with patent law within the EU. One of the most significant changes that was made by the Act, nonetheless, was the codification of the patentability of employee inventions under section 39. Thus, it was made clear that employee inventions created during the course of employment would belong to the employer. The Act also introduced worldwide novelty for the first time (section 2(1)) by requiring comparisons of previous technical knowledge to be made anywhere in the world. This clearly extended the protection of patent owners which was necessary given the modern changes in society and advances in international trade.

Bibliography

Text Books

  1. Catherine Colston, Jonathan Galloway, Daithi Mac Sithigh, Andrew Griffiths and Aisling McMahon. Modenr Intellectual Property Law 3/e. (Routledge, 2010)
  2. David I Bainbridge. Intellectual Property (Pearson Education, 2006)
  3. Jennifer Davis. Intellectual Property Law Core Text. (OUP Oxford, 2012)
  4. Lionel Bently and Brad Sherman. Intellectual Property Law (Oxford University Press, 2014)
  5. Neil J Wilkof and Daniel Burkitt. Trade Mark Licencing (Sweet & Maxwell, 2005)
  6. Taylor Frances Aplin. Intellectual Property Law: Text, Cases and Materials (OUP Oxford, 2013)
  7. Thomas M J Mollers and Andreas Heinemann. The Enforcement of Competition Law (Cambridge University Press, 2007)
  8. Tina Hart. Intellectual Property Law. (Palgrave Macmillnan, 2013)

Journal Articles

  1. Anthony Mosawi. ‘The fire line between trade marks’ (1995) 145 NLJ 410, 6688
  2. Bank Committee. ‘Implications of the Report of the Banks Committee on the Patent System and Patent Law’ (1970) London: HMSO, Cmnd 4407
  3. Chris Spencer and Richard Verow. ‘Making a mark – The Trade Marks Act 1994 defines trade marks more widely and provides the owner with new powers to protect against misuse’ (1994) 51 LS Gaz 91, 21
  4. Department of Trade and Industry. ‘Reform of Trade Mark Law’ (1990) The White Paper, Cm 1203
  5. Justine Pila. ‘Sewing the Fly Buttons on the Statute: Employee Inventions and the Employment Context’ (2012) 32 Oxford Journal of Legal Studies 2, 265
  6. Practical Law. ‘Overview of Trademarks’ (2016) accessed 11 February 2016
  7. Rafi Azim-Khan. ‘Webvertising and E-Commerce’ (1999) 1 EBL 3, 11

Case Law

American Greeting’s Corp’s Application[1984] RPC 329

Legislation

  1. Patent Act 1977
  2. Trade Mark Directive 89/104/EEC
  3. Trade Mark Act 1938
  4. Trade Mark Act 1994

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