30 years of the UK Trade Marks Act: Taking stock and looking forward
The three decades since the passing of the UK Trade Marks Act 1994 have witnessed unprecedented change in legal, social, economic, technological and geo-political terms.
To mark the 30th anniversary of the UK Trade Marks Act, Lord Justice Richard Arnold chaired a thought-provoking session, hosted by UCL Institute of Brand and Innovation Law and sponsored by CITMA. Panellists shared memorable cases and explored how the changing geo-political landscape – including Brexit – has affected the Act’s sphere of influence.
Early decisions: Is the mark distinctive by nature or nurture?
Geoffrey Hobbs KC, of One Essex Court, is the senior Appointed Person at the Court of Appeal. He recalled the first case he dealt with under the Act, relating to AD2000 TM [1997] ETMR 253. Seeking to capitalise on the approaching Millennium celebrations, the applicant sought to register the mark for goods in four classes. The application had been accepted on the grounds of Section 3, paragraph 1 (a) of the Act as capable of distinguishing the goods, but rejected on the grounds of paragraph b, that it was devoid of any distinctive character.
Geoffrey described working to reconcile these potentially conflicting instances by unpacking the architecture of the (a) clause and the (b) clause, coming to the view that “capable of distinguishing” meant capable to the limited extent of being “not incapable”, and that the b clause was about maturity.
Thus, the decision to reject the application was sound, not because the mark was not incapable of distinguishing goods or services but because it was not distinctive. He summarised this in his decision with the phrase, “it wasn’t distinctive by nature, and it hadn’t become distinctive by nurture.”
He added, “I’ve always thought that there is only one requirement for a mark to get on the register, that is to say that it possesses by nature or by nurture a distinctive character. And I've always thought that the legislation basically set up four ways of failing that test – but it was basically a single test.”
Lookalikes: Determining unfair advantage
CITMA President Kelly Saliger explored the contentious issue of copycat products, reflecting on a case from early in her career that remains divisive: L’Oreal v Bellure. The judgment in this case, which related to “smell-a-like” perfumes and comparative advertising, held that unfair advantage can take place without showing detriment to the distinctive character or reputation of the mark.
The decision prompted the profession to think more broadly about the different functions of trade marks beyond the origin function, looking at communication and advertising.
Kelly quoted Daniel Alexander KC, who said in his decision on PlanetArt LLC v Photobox Ltd, “The difficulty with this aspect of law is not conceptual, but arises because it is hard evidentially to disentangle a defendant’s intention to copy a claimant’s business from an intention to benefit from the claimant’s reputation and goodwill.”
Using the example of the ongoing Thatchers v ALDI case, Kelly noted that ALDI openly presented evidence that it “benchmarked” its product against the Thatchers product. Typically, such activities are concealed by defendants, but ALDI’s open approach and the Court’s finding that no unfair advantage was gained makes proving unfair advantage very hard, says Kelly, “It’s almost like we're moving to a position where we're assessing some kind of deceptive practice as unfair advantage - almost an assessment of fraud - and that feels like a very high benchmark indeed.”
Influence of UK trade mark law on the Commonwealth
Robert Burrell, Professor of IP and Information Technology Law at the University of Oxford and visiting professor at the University of Melbourne, delved into how the influence of UK trade mark law in Commonwealth jurisdictions has changed since the Act was implemented, discussing the divergence from, and potential for future reconvergence of UK trade mark law with that of other Commonwealth jurisdictions.
He noted that while the early life of the Act saw it heavily referenced in Australia and New Zealand, over time local drafting issues and conscious policy decisions have led to a natural divergence. In part, this is due to the impact of EU Court of Justice decisions that have “landed uncomfortably” in other jurisdictions.
There is potential for future reconvergence, said Robert, as UK Courts begin to hand down judgments that are “likely to be more readily accessible and more likely to be accepted elsewhere in the Commonwealth.” He also posed the question of whether UK courts and practitioners might start to look outward, asking, “Are we, as practitioners, going to be looking at those other jurisdictions or are we going to try to remain much more squarely within the European fold?”
Post-Brexit EU trade mark law: Which course ahead?
What is the impact of the UK’s exit from the EU on EU trade mark law and practice? That was the topic explored by Professor Annette Kur of the Max Planck Institute for Innovation and Competition.
Annette began by reminding the audience of the basics, saying, “Trade marks are IP rights, but the conditions and scope of protection are essentially shaped by their role of enabling and maintaining undistorted competition.”
She noted that, before Brexit, “we could always trust UK courts and scholarship to wave the red flag when CJEU jurisprudence tended to prioritize the proprietary character of trade mark law over competitive concerns. That corrective could be missing now.”
Referencing case 322/24 Audi v GQ, Annette explained how the CJEU’s decision “discarded any consideration of legitimacy and desirability of competition on the aftermarket.” Consequently, said Annette, the decision “did not take full account of the competition environment that trade mark law applies in.”
Ultimately, the Polish court’s decision found in favour of the dealer, but Annette shared her concern that the CJEU may continue to take a “rigid and proprietor-centred interpretation of EU trade mark law which is unable or unwilling to recognise the inherent limitations that result from trade marks being part of a larger system geared towards efficient competition and other policy goals.”
This was a fascinating look at the Act’s journey so far and the ongoing cases and wider environmental factors that will shape its future. We would like to thank the distinguished panel for their insightful contributions.
In case you missed it, you can watch a recording from the event here.