IP Legislation

Trade Mark Legislation

Trade mark law and practice was substantially modified and reformed by the Trade Marks Act 1994, which is now the principal statute governing trade mark law in the UK. This Act repealed the Trade Marks Act 1938 and brought in to force the provisions of Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks, which has subsequently been codified by Directive 2008/95.

As with a great deal of European legislation, the interpretation of the 1994 Act (and Council Regulation 40/94/EEC on the Community trade mark, which created the Community Trade Mark(now codified as Regulation 207/2009)), has been open to a good deal of speculation and as a consequence, costly litigation. The majority of the problems have arisen as a consequence of the application of the 1994 Act to uses of trade marks in connection with the internet and other new forms of technology.

Trade marks can be registered in other countries by application to the trade mark registry in each country of interest. However, an applicant may choose to use the Community Trade Mark System, if the only countries of interest are Member States of the European Union, or the Madrid System if the countries of interest are more widespread.

The Madrid System comprises the Madrid Agreement and the Madrid Protocol. The UK is a party to the Madrid Protocol along with 80 other countries. The main advantage of making use of the Madrid Protocol system is that only one application needs to be made in one language (either French or English) for international registration which is effective in one or more of the contracting states.

A more detail note of advice which addresses the various trade mark filing strategies is available to members.

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