RESTRICTED WORLD TRADE IP/Q2/GBR/1 13 October 1997 ORGANIZATION (97-4396) Council for Trade-Related Aspects Original: English of Intellectual Property Rights REVIEW OF LEGISLATION ON TRADEMARKS, GEOGRAPHICAL INDICATIONS AND INDUSTRIAL DESIGNS United Kingdom1 The present document reproduces the questions put to the delegation of the United Kingdom and the responses given in the review of legislation on trademarks, geographical indications and industrial designs in the context of the Council's meeting of 11-15 November 1996.2 _______________ I. REPLY TO THE GENERAL QUESTION CONCERNING PRIORITY RIGHTS3 Does your country recognize a right of priority on the basis of an earlier trademark application filed in any other WTO Member by a national of a WTO Member? At the end of 1995, the United Kingdom amended its trademarks legislation to recognize a right of priority on the basis of an earlier trademark application filed by any person in any other country which at that time was a WTO Member. The relevant legislative provisions providing this priority right for trademarks applications are Sections 35, 36 and 55 of the Trade Marks Act 1994. Section 35 together with Section 55 of the United Kingdom Trade Marks Act 1994 automatically provides for priority to be accorded to a trade mark application which has been filed in a Paris Convention country. Section 36 of the Trade Marks Act 1994 provides the power to extend the same privilege to other "relevant countries". The countries deemed to be "relevant countries" are specified in The Trade Marks (Claims to Priority from Relevant Countries) Order 1994. This particular measure was amended on 24 November 1995 [with effect from 1 January 1996] to include the following, who at that time were all the WTO Members not party to the Paris Convention: Antigua and Barbuda Dominica Maldives Bahrain Ecuador Mozambique 1 As regards laws and regulations relevant to the areas under review as notified by the United Kingdom, reference is made to document IP/N/1/GBR/1 as well as documents IP/N/T/GBR/T/1-2, IP/N/1/GBR/G/1-2, IP/N/1/GBR/D/1-2 and IP/N/1/GBR/C/1. 2 The minutes of this meeting are contained in document IP/C/M/11. 3 At the meeting of the TRIPS Council of 11-15 November 1996, Members agreed to respond to this question in the context of the present review (document IP/C/M/11, paragraph 43). IP/Q2/GBR/1 Page 2 Belize Guatemala Myanmar Bolivia Hong Kong Namibia Botswana India Nicaragua Brunei Darussalam Jamaica Pakistan Colombia Kuwait Sierra Leone Djibouti Macau Thailand Further amending legislation is currently being produced to update the above list to include those countries who have more recently acceded to the WTO and who are also not party to the Paris Convention. II. REPLIES TO QUESTIONS POSED BY THE UNITED STATES 1. Section 56(3) of the Trade Marks Act 1994 appears to permit the use of a well-known mark, by other than the proprietor of the mark, if the use began prior to the passage of the current law. Please explain whether this is an accurate understanding of this provision and, if so, how this is consistent with Article 2 of the TRIPS Agreement, to the extent it incorporates Article 6bis of the Paris Convention, and Articles 16.2 and 16.3 of the TRIPS Agreement. Section 56(3) of the Trade Marks Act 1994 does not permit the use of a well-known mark, by other than the proprietor of the mark, if such use began before the commencement of the current law. Rather it ensures that means of other than Section 56(2) must be relied upon to prevent the continuation of any bona fide use of a trademark begun before the commencement of the section; for example, the law of passing off. 2. Please explain how well-known marks used by third parties prior to the Trade Marks Act 1994 are protected in the United Kingdom and how United Kingdom law in this regard complies with the requirements of Article 16 of the TRIPS agreement. Well-known marks used by third parties prior to the entry into force of the relevant provisions of the Trade Marks Act 1994 continue to be protected as they were prior to the entry into force of the 1994 Act. That is, under the common law tort of passing off. The United Kingdom considers that the protection afforded to well-known marks against use by third parties under the law of passing off fully complies with the requirements of Articles 16.2 and 16.3 of the TRIPS Agreement. [Follow-up question from the US] What are the elements that must be shown by the owner of an unregistered well-known mark in order to prevail in an action to protect its mark under the common law tort of passing off prior to the passage of the 1994 Act? For example, must the owner of the well-known mark have used the mark in the United Kingdom? Must the owner of the well-known mark have goodwill in the mark in the United Kingdom? Are there any recent reported cases on this matter? To protect its mark under the common law tort of passing off, the owner of an unregistered well-known mark would have to show the following three elements: misrepresentation (which need not be intentional), reputation (sometimes expressed as "goodwill") and damage. IP/Q2/GBR/1 Page 3 The courts in the United Kingdom have given no specific guidance concerning whether a well- known mark must be used in the United Kingdom, or whether the owner of the well-known mark must have goodwill in the United Kingdom. The court will consider each individual case on its merits, according to the specific facts. We are not aware of any recent reported cases on this matter. 3. The provision for well-known marks in Section 6(1)(c) of the Trade Marks Act 1994 does not specify that the renown of the mark be determined by taking into account the relevant sector of the public and knowledge obtained through the promotion of the mark, as is required by the TRIPS Agreement. Please explain whether this standard is established by regulation or through case law and, if neither, how the law of the United Kingdom can be considered consistent with Article 16.2 of the TRIPS Agreement. As US question 3 correctly surmises, the Trade Marks Act 1994 does not specify explicitly that, in determining whether a trademark is well known, account must be taken of the knowledge of the trademark in the relevant sector of the public and knowledge obtained through promotion of the mark. This standard is established by case law. In determining whether a trademark is well known, a court in the United Kingdom would necessarily have to take account of any and all relevant facts upon which it is addressed. In this respect, the law of the United Kingdom is consistent with Article 16.2 of the TRIPS Agreement. [Follow-up question from the US] Please provide citation to and a copy of any case(s) in which the Article 16.2 of the TRIPS Agreement is established and applied by UK courts. We are not aware of any case(s) in which the standard of Article 16.2 of the TRIPS Agreement has been established and applied by courts in the United Kingdom. 4. Please describe the methods by which industrial designs are protected in the United Kingdom, in particular: - the form or forms of intellectual property used to protect the design (e.g., patent, copyright, sui generis); - the conditions that must be satisfied to obtain the grant of such protection (e.g., whether designs must be new or original and the parameters of these concepts), and a brief description of the registration or granting procedure; - the nature of the rights granted and the term of protection provided; - the nature of remedies available to the owner of each type of protection, including a description of the conditions that may be imposed (e.g., whether commercial use is required); and - whether any exceptions to protection or rights exist for each type of intellectual property involved. IP/Q2/GBR/1 Page 4 Introduction The United Kingdom's obligations under Section 4 of Part II of the TRIPS Agreement are met by the Registered Designs Act 1949. The Act was significantly amended by the Copyright, Designs and Patents Act 1988. This latter Act includes in Schedule 4 a copy of the Registered Designs Act 1994 as amended. The Registered Designs Act 1949 provides protection, based upon registration, for designs which are new. Section 1(1) of the Act defines designs as features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye. Excluded from protection are features of shape or configuration of an article which are dictated solely by the function which the article has to perform or are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part. Such exceptions are consistent with Article 25.1 of the TRIPS Agreement. Registration Procedure An application for registration of a design is first filed at the United Kingdom Patent Office in the manner and form prescribed in the Act and the Registered Design Rules 1995. A search and examination is then performed to ensure that the design is new.