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  • Writer's pictureRosie Burbidge

How has well-known mark protection changed?



The recent Trade Marks (Amendment) Regulations 2022 made minor changes to the Trade Marks Act regarding the protection of well-known marks (including both registered and unregistered trade marks).


The changes are summarised on the UK IPO’s website here and are designed to ensure clearer compliance with WIPO’s Joint Recommendation on the Protection of Well-Known Marks.


Two changes

There are two changes that were introduced by the amendment.


The first is that section 56 of the Act (which concerns the protection of well-known marks) applies to UK-based holders of well-known marks. Previously, these provisions could only be relied on by holders of a mark connected with a Paris Convention country (but not the UK). The UK IPO said:

“From a practical perspective, UK-based individuals and businesses already have other provisions within the TMA to enforce their rights. This includes where they hold a registered well known mark and through passing off. However, we are taking this opportunity to extend the drafting to include the UK within scope.”

The second change makes additions to Section 56(2) and Section 56(2A) to give holders of unregistered well-known marks a new remedy to prohibit the use of a conflicting trade mark where it is being used on dissimilar goods or services. The IPO states:

“For example, the new law will mean that the holder of an unregistered WKM, such as a famous brand like ‘Rolls-Royce’, can rely on WKM provisions where its name was unjustly being used, not only on cars and similar goods, but also on sports equipment or even domestic cleaning products. This applies where that use takes unfair advantage of the distinctive character or repute of the ‘Rolls-Royce’ mark.”

What does this mean?

Well-known marks are a valuable asset that need to be protected. While these changes are relatively minor, it is important to be aware of them as another weapon in the IP arsenal.


We work with a number of holders of well-known marks to protect them and take prompt action against threats. If you would like to know more, please contact us!


To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com


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