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Thursday, 8 April 2004

AMENDMENTS TO TRADE MARKS ACT

Anna Carboni has informed the IPKat of a forthcoming important change to the Trade Marks Act 1994. Paragraph 7 of Statutory Instrument 2004 No. 946, The Trade Marks (Proof of Use, etc.) Regulations 2004 amends ss5(3) and 10(3), removing the need for the parties goods and services to be dissimilar.

S.10(3) will now read

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.

S.5(3) will now read

A trade mark which is identical with or similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and 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 trade mark.

The IPKat notes that this will bring the UK law into line with the effect of the ECJ’s decisions in Davidoff v Gofkid and Adidas v Fitnessworld , which decided that Articles 5(2) and 4(4)(a) of the Trade Mark Directive (the EU’s equivalent of dilution legislation) apply to identical and similar goods type situations and not just to dissimilar goods situations. However, he isn’t aware of any plans to change the Directive.

Dilution here, here and here

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