AMENDMENT BY STEALTH FOR UK TRADE MARK LAW

Four new pieces of subordinate trade mark legislation come into force on Wednesday 5 May in the UK. They are as follows:

(i) The Trade Marks (Proof of Use, etc) Regulations 2004 (2004 No. 946): amends the Trade Marks Act 1994 and introduces a proof of use regime into the UK opposition and invalidation procedures. Also, following the two judgments of the European Court of Justice in Case C-292/00 Davidoff v Gofkid and Case C-408/01 Adidas-Salomon v Fitnessworld, the text of ss 5(3) and 10(3) of the Act has been brought into line with that court's interpretation of Article 5(2) of Council Directive 89/104. Section 10(3), which protects well-known marks, now reads as follows:

10(3) A person infringes a registered trade mark if he uses in the course of trade a sign which-

(a) 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.

(ii) The Trade Marks (Amendment) Regulations 2004 (2004 No. 947): amends the Trade Marks Rules 2000 by introducing a new streamlined opposition procedure and some other technical changes.

(iii) The Trade Marks (International Registration) (Amendment) Regulations 2004 (2004 No. 948): this instrument amends the Trade Marks (International Registration) Order 1996 so as to ensure that the amendments to the Trade Marks Rules 2000 also apply in relation to International Registrations that seek protection in the UK.

(iv) The Community Trade Mark (Amendment) Regulations 2004 (2004 No. 949): this instrument updates the Community Trade Mark Regulations 1996 so that they correctly cross-refer to the Trade Marks Rules 2000 as amended.

The IPKat feels that, particularly in the case of the first of the four statutory instruments, we have seen an example of legislative amendment by stealth. The fact that so many leading practitioners were unaware of the impending changes until shortly before (or in some cases shortly after) they happened is somewhat worrying.