As the Guidance explains, a well-known mark (WKM) is one that is well known in the UK and which the public commonly knows about, e.g. GOOGLE or BRITISH AIRWAYS. Trade mark law gives special protection to these because of their recognition and reputation. This protection can apply regardless of whether the mark is registered in the UK or not.

The Guidance covers changes to the Trade Marks Act 1994 for WKMs made by the Trade Marks (Amendment) Regulations 2022, which came into force on 27 December 2022.  The main impact of the change is that owners of WKMs who have connections with the UK will now be able to rely on the provisions relating to WKMs to enforce marks which are well known in, but not registered in the UK.  Previously they had to rely on passing off rights.

The new Regulations make technical amendments to the 1994 Act in two areas: (i) s 56 of the 1994 Act changes so it applies to UK connected holders of WKMs; and (ii) additions at s 56(2) and s 56(2A) mean UK holders of unregistered WKMs have a new remedy to protect their mark.

Previously the WKM provisions in the 1994 Act could only be relied upon by holders of a mark connected with a Paris “Convention country” other than the UK, because s55 (1) excludes  the UK from that definition. The amendments to s 56 will ensure that all the provisions for WKMs in s 56 will now apply to UK nationals. This amendment also feeds into the definition of “earlier trade mark”. Therefore, the relative grounds provisions which permit owners of WKMs to challenge a trade mark will now also extend to UK holders.

The amendments to ss 56(2) and 56(2A) now provide the right for holders of unregistered WKMs to prohibit the use of a conflicting trade mark where it is being used on dissimilar goods or services. For example, the new law will mean that the holder of an unregistered WKM, such as “Rolls-Royce”, can rely on WKM provisions where its name is unjustly being used, not only on cars and similar goods, but on other goods or services as well. This will apply where that use takes unfair advantage of the distinctive character or repute of the “Rolls-Royce” mark. To access the new Regulations, click here. To access the Guidance, click here.