Publications > Well known marks: Well known law? (Part 3)


UK law
Given the considerations made above, we are now in a better position to look at how the UK protects well known marks.
Relevant UK law is as follows from the UK TMA (1994):

 s. 5 (3) A trade mark which –

(a) 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 or international trade mark (EC) 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.
(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented-
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade
s. 6. - (1) In this Act an “earlier trade mark” means –
(c) a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark.
(3) A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services 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.
55. - (1) In this Act-
(a) “the Paris Convention” means the Paris Convention for the Protection of Industrial Property of March 20th 1883, as revised or amended from time to time,
(aa) “the WTO agreement” means the Agreement establishing the World Trade Organisation signed at Marrakesh on 15th April 1994, and
(b) a “Convention country” means a country, other than the United Kingdom, which is a party to that Convention or to that Agreement.
(2) The Secretary of State may by order make such amendments of this Act, and rules made under this Act, as appear to him appropriate in consequence of any revision or amendment of the Paris Convention or the WTO agreement after the passing of this Act.
56. - (1) References in this Act to a trade mark which is entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark are to a mark which is well-known in the United Kingdom as being the mark of a person who-
(a) is a national of a Convention country, or
(b) is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country,
whether or not that person carries on business, or has any goodwill, in the United Kingdom.
References to the proprietor of such a mark shall be construed accordingly.
(2) The proprietor of a trade mark which is entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark is entitled to restrain by injunction the use in the United Kingdom of a trade mark which, or the essential part of which, is identical or similar to his mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.
This right is subject to section 48 (effect of acquiescence by proprietor of earlier trade mark).
(3) Nothing in subsection (2) affects the continuation of any bona fide use of a trade mark begun before the commencement of this section.
The first point to note is that the wording in 6(1)(c) departs from that of the Directive
Art 4(2). 'Earlier trade marks' ... means:
(d) trade marks which, on the date of application for registration of the trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the trade mark, are well known in a Member State, in the sense in which the words 'well known' are used in Article 6 bis of the Paris Convention.
The wording differs firstly, by amendments made in 1999, and then in 2006, to incorporate references to the WTO Agreement,[i] but more importantly, the wording appears to provide protection to a well known mark under section 5 only if and to the extent that the mark would be protected under either Article 6bis of the Paris Convention or Article 16(2) or (3) of TRIPs. However, as Richard Arnold QC pointed out in Le Mans,[ii] this is actually not the case in law. The extent of protection of a well known mark in the Directive (and therefore in UK legislation) depends on its qualification as an ‘earlier’ trade mark, not on what rights are given in international conventions or agreements, these being seen as minimum requirements,[iii] as long as there is consistency with these. Thus, even if there were no amendment to include the WTO (i.e. TRIPS), reference within  Section 6(1)(c) to Article 6bis - which does not provide well known marks with protection for services in the Paris Convention itself – would have been interpreted as providing protection to services regardless.[iv]
The second point to note is that protection is excluded for owners who are nationals of the UK or are domiciled in, or have a ‘real and effective industrial or commercial establishment’ within the UK.  This point was the subject of a Registry Hearing in CUTTY SARK in 2001 where it was argued that “other than the United Kingdom” should be construed as a form of inclusion in the negative: “who are the 45 people in this room other than myself?” The Hearing Officer, Mr Mike Foley, declared:  “In my mind the qualification in Section 55(1)(b) “other than the United Kingdom” means just what it says and excludes persons domiciled or commercially active solely within the United Kingdom from utilising the provisions of Section 56, who instead are able to look to the law of passing off contained within Section 5(4)(a) of the 1994 Act.”[v] An appeal before Justice Jacob (which was dismissed) did not consider the point but considered it might require considering in the future.[vi]
Spain, on the other hand, does appear to extend Convention protection to its own citizens. In FINCAS TARRAGONA, the Advocate General considered the position of countries such as the UK who do not extend the convention to purely internal situations and why they differ from countries such as Spain. It is all to do with how academic writers view the nature and purpose of the Convention:
“...According to some, the Convention pursues minimum harmonisation of the laws of the Convention countries from the substantive point of view and thus lays down uniform legal provisions which apply regardless of the nationality of the persons seeking protection. According to others, on the contrary, it is an international convention concerned solely with the treatment of foreigners and guarantees foreigners minimum protection beyond the scope of the principle of national treatment... According to the second approach... the Convention countries are required to grant so-called ‘Convention treatment’ only to nationals of other Member States or third countries ... On that basis, the Convention operates only as the force driving the process of legislative harmonisation within the Union, encouraging, but not requiring, the Convention countries to extend to their own nationals the rights enjoyed by foreigners under the Convention... in order to avoid discrimination detrimental to the former.”
The conclusion? “I do not think it appropriate for the Community Court to give a ruling, even if only implicitly, on the question outlined above.”
Ultimately, however, this doesn’t matter with regard to the question of a well known unregistered mark:  “I do not think moreover that it can be stated, whatever scope may be accorded to Article 6 bis of the Paris Convention, that the obligation to protect marks that are well known, within the meaning of that provision, even in purely internal situations attaches to the Member States by operation of Community law, given that the rules on non-registered trade marks ... have not to date been made the subject of harmonisation.”[vii]
The situation, therefore, in the UK is that the provision on well known marks applies only to foreigners. Does this in actual fact make a difference with regard to trade mark protection for UK nationals operating within the UK? And what is the full extent of the advantages that foreigners actually have?
UK Case law
In the UK, case law on well known marks is extremely sparse. In the 1938 Trade Marks Act , s. 27, there was a provision for the defensive registration of ‘well known’ marks (not in the Paris Convention sense, though), but this is now not available and there was little case law.[viii] Noteworthy cases post the 1994 Act are CUTTY SARK, mentioned above, Le Mans Autoparts Ltd’s Trade Mark Application, also referred to above, CIPRIANI  and, also in 2008, FIANNA FAIL, with the Appointed Person Geoffrey Hobbs QC.[ix] In this latter case, it was stated, in the context of opposition proceedings, that section 56(1) of the Act operated either as an ‘earlier trade mark’, as per Section 6, or as an ‘earlier right’, as per Section 5(4)(a).[x] The relevance of the latter is that, potentially one can have a right not based on passing off (“by virtue of any rule of law...protecting an unregistered trade mark or other sign used in the course of trade”) which is unregistered in the UK but nonetheless has the rights of 56(2), namely “to restrain by injunction the use in the United Kingdom of a trade mark which, or the essential part of which, is identical or similar to his mark, in relation to identical or similar goods or services, where the use is likely to cause confusion”.   Unlike with passing off, there is no need for an additional requirement of likelihood of harm for this right to subsist. Nor is there a requirement for carrying on business or having goodwill. What is required, however, is that the mark be well known according to the criteria accepted by the courts, this principally being the WIPO Joint Recommendation as used in Le Mans (and more recently CIPRIANI).[xi] This is a very interesting application of the UK Act, and is the first case known to this author where this possibility is flagged. Because this is outside the scope of the Directive (as it deals with unregistered rights) it lies with the courts without reference to European case law to extend protection to well known marks in this way. Indeed, in a very recent opposition case at the UK Trade Mark Registry where the mark AAX, filed by American Auto Exchange, was opposed by GA  Modefine S.A., owners of the A/X ARMANI EXCHANGE mark, the analysis of Geoffrey Hobbs was followed by the Hearing Officer, Oliver Morris.[xii] Section 56 was pleaded by the opponents, a well known mark being accepted by the Hearing Officer as “an unregistered trade mark or other sign” for the purposes of s.5(4)(a). He recognised that this was “an unusual pleading”, but conceded that s. 5(4)(a) “provides for refusal based on any rule of law (not just the law of passing-off).”[xiii]
The more traditional manner, nonetheless, of securing protection for unregistered marks is through the common law of passing off. This only gives protection, however, if there is goodwill to be protected. Goodwill can only subsist in relation to a business to which it is attached and not to a trade mark per se. This also means the mark has to have been used locally.[xiv] Despite the increasing endeavours of the courts to protect the interests of foreign traders by accepting limited use, such as through overspill advertising that generates some sales locally, e.g. in Jian Tools for Sales Inc. v Roderick Manhattan Group Ltd,[xv]protection under passing off does not extend to unregistered marks that only have reputation but have not been ‘used’ in the country in the sense of s.56(1) and the WIPO Joint Recommendations.[xvi]

Dissimilar goods and services

With regard to extension of protection to non-competing goods, however, the situation is more complex. The Directive, TRIPS, and the UK Trade Marks Act only protect marks ‘having a reputation’, which by default a well known mark is, via legislative mechanisms that protect registered marks. In the UK the sole mechanism for foreign mark protection if it is unregistered is through passing off. The reference to the WTO Agreement does not include in any way Art. 16(3), a point recently reaffirmed in AAX.[xvii] Section 56 only describes a well known mark in terms of Art. 6bis itself. It is clear, therefore, that there is no independent heading for ‘Convention’ well known mark protection other than if a mark has been registered and falls under s.5(3). This protection, of course, does appear to comply with TRIPS and is the implementation of Directive Art. 5(2) which is regarded as itself complying with TRIPS.
The ‘limitations’ of passing off
In English passing off case law, the requirement for a ‘common field of activity’ was asserted by Wynn-Parry J in the ‘Uncle Mac’ case in 1947 (McCulloch v May) – this was an unsuccessful attempt by a popular children’s broadcaster to prevent use of his pseudonym for a breakfast cereal. It is only in relatively recent times that courts have departed from the rule that there needs to be a common field of activity.[xviii] However, the House of Lords in Advocaat ([1979] AC 731) firmly established to the contrary that this is not a requirement. This was also the case in the LEGO case (Lego Systems v Lego M Lemelstrich) where the action succeeded despite the different fields of activity, viz. toy building bricks and irrigation equipment.[xix] What remained constant however was the need for sufficient good will, misrepresentation, and damage, actual or likely.
What, therefore, of the situation where an owner of a well known unregistered mark believes, say, the packaging of his famous products is being misappropriated, despite no immediate discernible harm and no confusion (for example where the words ‘imitation’ are clearly visible for similar goods, or where the goods are too different to lead to confusion)? How does the law help the owner with what appears plainly to be unfair competition? Being unregistered, even if well known, the unregistered mark only has statutory protection through passing off. Section 56(2) – for non-UK residents – requires an element of confusion. [xx] This was the type of situation with L’Oreal in the Court of Appeal, where Henry Carr QC, failing to secure passing off on non-confusing but unfair packaging of perfumery, attempted to secure infringement on the basis of a ‘tort of unfair competition’, arguing that misappropriation is a sufficient condition rather than misrepresentation. This led to Lord Justice’s comment that’We are all against misappropriation, just as we are all in favour of mother and apple pie” but that doesn’t mean one can just invent a new tort.[xxi]
What does section 56 TMA actually say?
A final reflection on section 56 is prompted by Richard Arnold in a comment in CIPRIANI, where he says at 236: “Section 56 implements in domestic law Article 6bis of the Paris Convention and Article 16 of TRIPs. It provides a remedy for foreign traders whose trade marks are well known in the United Kingdom but do not own goodwill here.” In the particular case being determined, it was found that the claimant (Hotel Cipriani in Venice) was entitled to an injunction under section 56.
Section 56, however, does not actually provide, somewhat curiously, the other remedy envisaged by Paris Art 6bis for an unregistered well known mark, namely to refuse or to cancel the registration of the confusingly similar mark. In other words, on the face of it s.56 does not appear to be a free standing ground for opposition, unless mediated via s.5(1) or 5(2) (as argued above, section 5(3) requires a registration), or via s.5(4)(a).[xxii] The Registry form for opposition (TM7) does not as yet reflect these distinctions.[xxiii]
As regards TRIPS, one could ask whether s.56 is in conformity with TRIPS rather than being an implementation. It certainly doesn’t implement Art 16(3), and even 16(2) presupposes registration.
Anyone taking up the UK TMA and reading the references to a ‘well known mark’ in Section 6(1)(c) and Section 56, would not be able to draw much certainty as to the effect from the words themselves, or even from the referenced original legislative texts, viz Article 6bis of the Paris Convention and Article 16 (2) and (3) of TRIPS. One reason is that the term itself of ‘well known’ remains undefined, and internationally it can mean whatever any authority wants it to mean, including the UK, which follows criteria, but which are not necessarily set in stone. Secondly, the UK Act, despite its references to the Paris Convention and the World Trade Organisation (i.e. TRIPS) is to be construed in light of the Directive. Thirdly, the protection of a well known mark as originally envisaged by the Paris Convention in 1925 foresaw the need for protection of a ‘famous’ mark that is unregistered. The thinking behind the protection was ‘reputation without use’. TRIPS, on the other hand, unhelpfully (for our purpose) deals with ­registered­ well known marks, and the UK Act has references to both registered and unregistered well known marks without ever making explicit that such is the case.  And fourthly, the very way the Act refers to well known marks is anything but clear, following neither the Directive, nor the wording of TRIPS, nor even the wording of the Paris Convention itself.
Our contention, then, is that for all the reasons given above the law on well known marks in the UK is not at all well known. Hopefully this article goes some way in making this law a little less opaque.

[i] By the Patents and Trade Marks (World Trade Organisation) Regulations 1999, SI
1999 No. 1899, regulation 13, and the Intellectual Property (Enforcement, etc) Regulations 2006, SI 2006 No 1028. As the Directive, which pre-dates TRIPS, is consistent with the latter, providing protection as extensive as that found in Art 16(2) and (3), it did not have to put TRIPS into effect (see the comment by Richard Arnold QC in Le Man, ibid, 49). And as the UK Act needs to be construed in accordance with the Directive (Marleasing principle), it can be argued that these amendments were unnecessary.
[ii] At 52.
[iii] Cf. Advocate General in FINCAS, par.32: “Article 6 bis of the Paris Convention ... defines the minimum content of the international protection granted to well-known marks.”
[iv] The ECJ in AMERICAN CLOTHING has also confirmed this. See above.
[v] IMPERIAL TOBACCO LIMITED and opposition thereto by BERRY BROS. & RUDD LIMITED (‘CUTTY SARK’), BL O/281/01 (2 July 2001) at p.13.  The point at issue was whether the whisky CUTTY SARK could be given well known status and used as a basis for opposition when the manufacturers were based in the UK but exported abroad. One could ask, does this also exclude a UK national who lives abroad and manufactures abroad?
[vi] Imperial Tobacco Ltd v. Berry Bros & Rudd Ltd (Jacob J.; 31.10.01).
[vii] Opinion, 34-39. Further consideration on the principle of national treatment is given by the ECJ in AMERICAN CLOTHING, esp. par. 104-6, however whether this has provided any greater clarity on the matter discussed here requires further consideration.
[viii] S.27 (1): ‘Where a trade mark consisting of an invented word or invented words has become so well known as respects any goods in respect of which it is registered and in relation to which it has been used that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first-mentioned goods, then, notwithstanding that the proprietor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods... the trade mark may registered in respect of those other goods as a defensive trade mark and, while so registered, shall not be liable to be taken off the register in respect of those goods.”
[ix] Appointed Person, O-043-08 (15 February2008) FIANNA FAIL.
[x] Ibid, n.28
[xi] Hotel Cipriani SRL v Cipriani (Grovesnor Street) Limited, [2008] EWHC 3032 (Ch), 237ff.
[xii] In the matter of Application 2462176 in the name of American Auto Exchange, Inc, for the mark AAX in classes 9,35 & 42 and in the matter of Opposition no 96190 by GA Modefine S.A. O-232-09, 4 August 2009. My thanks to Katie Cameron of R.G.C. Jenkins & Co. for pointing out this case to the author.
[xiii] Ibid, at 6.
[xiv] Cf. Lord Diplock in Star Industrial Company Ltd v Yap Kwee Kor:  [1976]FSR 256 (PC) at 269; AG Spalding & Bros v AW Gamage Ltd: (1915) 32 RPC 273 at 284 per Lord Parker of Waddington
[xv] [1995] FSR 924.
[xvi] Geoffrey Hobbs’ approach, however, would appear to solve this problem, at least for confusingly similar marks on similar goods and services.
[xvii] Ibid, 33.3: “... in relation to dissimilar goods and services, there is no provision (despite Article 16(3) of TRIPS) in section 56(2) of the Act to prevent the use of the applied for mark in relation to dissimilar goods and services, and, in any event, Article 16(3) relates to earlier marks which are also registered.”
[xviii] The Uncle Mac episode was finally buried by Mr Justice Laddie in Eddie Irvine v Talksport: [2002] FSR 60.
[xix] [1983] FSR 155
[xx] Even under Geoffrey Hobbs’ hypothesis of a possible direct protection for well known marks under s.5(4)(a) and s. 56 there is no recourse, as a) confusion is a requisite, and b) this does not apply to UK based businesses.
[xxi] [2007] EWCA Civ 968,At 160.
[xxii] Unless, of course, it is argued that implicit to the remedy of injunctive relief is the legal ground for opposition to registration.  
[xxiii] There is no mention of s.56 in relation to 5(4)(a), and in the “Statement of other grounds of opposition” we have: “Section 5(1),(2), (3) if the opponent is claiming protection for an earlier trade mark under Section 6(1)(c) which is a well known trade mark as defined in Section 56(1).” Note also the comment of Oliver Morris, in the AAX case cited above, fn.xii, at 4, where a self-standing s.56 is questioned.

First published in the ITMA Review of December 2009