Amendment to Trade Marks Act 1994

An important amendment has been made to Section 10(3) of the Trade Marks Act 1994 relating to the test for trade mark infringement which has widened its ambit. This change has been introduced by the Trade Marks (Proof Of Use, etc) Regulations dated 5 May 2004 (SI 2004/946), which also contains various new provisions covering changes to Trade Mark Registry proceedings.

Section 10 contains the framework for the various acts of trade mark infringement.

Section 10(1) covers the straightforward circumstance of the use of a sign identical to the mark registered and used on identical goods or services.

Section 10(2) covers the use of

• an identical sign used on similar goods/services; and
• a similar sign used on identical goods/services; and
• a similar sign used on similar goods/services, provided that in these cases a "likelihood of confusion" can be shown.

Section 10(3) (prior to this amendment) gave special protection to marks with a reputation and covered the use of an identical or similar sign to the registered mark on dissimilar goods/services. The origin of Section 10(3) was Article 5(2) of the Trade Marks Directive 89/104/EEC, which was an optional provision for Member States.

The change has been made in response to the recent ECJ judgments of Davidoff -v- Gofkid, C-292/00 dated 9 January 2003, as confirmed by Adidas -v- Fitnessworld, C-408/01 dated 23 October 2003.

These cases established that Member States which chose to adopt Article 5(2) of the Trade Marks Directive in relation to marks with a reputation had an obligation to implement the protection so as to cover not only dissimilar goods but also identical or similar goods.

Section 10(3) now reads as follows:

"A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services a sign which is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."

The same amendment has been made to Section 5(3) of the Trade Marks Act, which is concerned with relative grounds on which trade mark applications may be refused. The change is of great significance as under Sections 5(3) and 10(3) it is not necessary to show a likelihood of confusion. A larger number of trade mark owners will now have reason to allege that they have a mark with a reputation, so as to take advantage of these expanded provisions.