English law up to now on the protection of trade marks stems from the Trade Mark Act of 1938. To some extent, and with increasing implications for retailers and other brand owners slugging it out in the supermarkets, the legislation was out of tune with present day commercial realities.
The recent spate of squabbles over 'copy-cat' or 'look-alike' brands has served to highlight a simple commercial truth. The establishment and protection of intellectual property rights is big business and can only get bigger.
Why, otherwise, did the British Producers and Brand Owners Group lobby the Government to include measures in the new act to prevent the unfair use of goodwill inherent in well-known brands? Although they seem to have failed, companies like Coca-Cola Schweppes Beverages, ICI Paints, Sony UK and Guinness will go on fighting to protect name brands from infringement and subsequent devaluation.
While up to now, they have had to rely on passing-off, trade mark registration, copyright and design right for protection, the new act introduces new possibilities for the registration and protection of trade marks on a wider basis than before.
A mark or get-up which is not registered as a trade mark, or otherwise protected by copyright or design right, may be protected by invoking the law of passing-off, often a difficult claim to prove.
However, wherever possible, a get-up should be registered as a trade mark and one of the purposes of the new act will be to make it easier and cheaper to secure registration of a wider range of trade marks.
Previously, the marks that qualified for trade mark protection were restricted in range. Under the act, the definition of a registerable trade mark is more flexible and extends to 'any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings'. The definition goes on to say that a trade mark may consist of words, including personal names, designs, letters, numerals or the shape of goods or their packaging.
In the past, shapes have not been registerable, leaving owners of brands distinguishable by, say, a bottle or packaging shape, to resort to the tort of 'passing-off' for protection. A good example of this is the Jif lemon juice container, which was the subject of passing-off proceedings which could be avoided under the new legislation.
To qualify for registration, a mark must still be 'distinctive' but it will be possible to register smells and sounds, although it is unclear how this will be applied. In some circumstances, colours and colour combinations will also be registerable, as for example on pharmaceutical products such as pills.
The owner of a registered trade mark will enjoy wider protection than at present, in that he will be able to prevent the use of his mark by another in connection with goods or services which are different from those in respect of which his mark is registered, provided they are similar. Under the previous law, a registered trade mark was infringed only if it was applied without authority to the same goods.
The wider possibilities for registration introduced by the 1994 act should remove many cases from the ambit of the law of passing-off to the considerable advantage of all concerned, in that they will know where they are.
Ann Hunt is a partner at Allison & Humphreys.