United Kingdom: Protecting and enforcing renowned trademarks in non-registration jurisdictions

Many companies now operate in a global marketplace and enjoy a strong international reputation for their famous brands. However, problems can arise where brands are not registered as trademarks in every country where they have a strong reputation

Many companies now operate in a global marketplace and enjoy a strong international reputation for their famous brands – clear examples being Microsoft, Virgin, Nike and Amazon. However, some brands may not be registered as trademarks in every country where they have a strong reputation; problems can then arise for a brand owner if a third party seeks to exploit the brand in such a country.

This article discusses the special protection afforded to unregistered well-known marks in the United Kingdom and how they can be enforced in infringement proceedings and opposition and invalidity actions.

Paris Convention and TRIPs

Article 6bis of the Paris Convention and Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) provide international standards of protection for well-known marks. However, the Paris Convention does not provide guidance on what amounts to a well-known mark, while TRIPs provides only limited guidance.

While there is no agreed definition of a ‘well-known mark’, the World Intellectual Property Organisation’s (WIPO) Joint Recommendation on the Protection of Well-Known Marks 1999 contains useful guidance on the factors from which it may be inferred that a mark is well known. These include:

the degree of knowledge or recognition of the mark in the relevant sector of the public;
the duration, extent and geographical area of any use of the mark;
the duration, extent and geographical area of any promotion of the mark;
the duration and geographical area of any registrations – or applications for registration – of the mark, to the extent that they reflect its use or recognition;
the record of successful enforcement of rights in the mark; and
the value associated with the mark.

The first factor does not refer to the mark being well known by the public generally, but only in the relevant sector – therefore, it is not just obvious household names which can enjoy well-known status.

Trademarks Act 1994

Section 56 of the Trademarks Act 1994 expressly implements Article 6bis and Article 16. It applies to marks which are well known in the United Kingdom, regardless of whether the brand owner carries on business or has any goodwill there. The only condition is that the brand owner be a national of, be domiciled in or have a real and effective industrial or commercial establishment in a country that is a signatory to the Paris Convention.

What amounts to a well-known mark for the purposes of Section 56 was considered by Justice Arnold in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Limited ([2008] EWHC 3032 (Ch)). The claim was for UK trademark infringement (based on registered marks as well as Section 56) and passing off concerning the mark CIPRIANI, brought by the owners of the Hotel Cipriani in Venice against the owners of a restaurant in London called Cipriani London.

The judge followed the criteria set out in WIPO’s joint recommendation and concluded that CIPRIANI was a well-known mark for hotel and restaurant services among that sector of the public (this decision was upheld on appeal). He commented that these criteria are not inflexible and are to be used as a basic framework for assessment – the determination will depend upon the particular circumstances in each case. Cipriani is helpful because it is the first time that a UK court has had to apply Section 56 – it provides clear guidance on the factors which can indicate that a mark is well known.

UK infringement proceedings

Section 56 entitles the brand owner to obtain an injunction restraining the use of a mark which (or the essential part of which) is identical or similar to the mark in question in relation to identical or similar goods, where the use is likely to cause confusion. This will require similar analysis to that required for a claim under Section 10(2) of the Trademarks Act.

Section 56 does not require the claimant’s business to attract goodwill as a result of using the well-known mark. Further, the claimant is not required to show that use of the mark complained of has damaged or is likely to damage the owner. For these reasons, a claimant may want to consider a Section 56 claim in the alternative to the common law tort of passing off (the possible other route for protecting an unregistered famous mark in the United Kingdom). For a passing-off claim, both goodwill and damage (or a likelihood of damage) must be present, together with misrepresentation to the public leading to a belief that goods or services offered by the defendant are the goods or services of the claimant. However, a foreign business with significant reputation in its famous brand may not have carried out business in the United Kingdom and therefore may have no associated goodwill.

Section 56 is limited in that the only remedy available appears to be an injunction. The rationale for this is that there is no requirement that the use of the mark complained of have caused damage or be likely to cause damage. By contrast, a successful claimant in a passing-off action is entitled to claim an injunction, damages or an account of profits and delivery up or destruction of the infringing goods.

Section 48 of the Trademarks Act (acquiescence by the proprietor) is expressly stated to apply to Section 56. It is unclear to what extent the other statutory defences in the act are to be taken into account; but it would seem odd if the owner of a well-known mark would be in a better position than, for example, a person using his or her own name.

UK opposition and invalidity actions

Article 6bis obliges the signatories to the Paris Convention to refuse or to cancel the registration of a trademark which constitutes a “reproduction, an imitation, or a translation, liable to create confusion, of a mark considered to be well known in that country as being already the mark of a person entitled to the benefits of [the] Convention and used for identical or similar goods”.

Well-known marks may therefore form the basis of UK opposition and invalidity actions. Section 56 can be invoked in opposition proceedings by way of Section 5(4)(a) of the Trademarks Act, which precludes registration for marks that are liable to offend against any rule of law protecting an unregistered trademark or other sign used in the course of trade. The same ground can be relied on in invalidity proceedings by virtue of Section 47(2)(b) of the act, provided that the challenged mark is less than five years old.

Some opposition decisions provide useful insight into the reasoning of the UK registry when considering whether a mark is well known for the purposes of Article 6bis – in particular, the decision of Richard Arnold QC, sitting as an appointed person in an appeal concerning the UK trademark application for LE MANS (0/012/05). Despite some shortcomings in the evidence filed by the opponent, Arnold found that LE MANS was a well-known mark in the United Kingdom for the services of organising and managing motor-racing events, both among consumers of, and traders in, such services and among the public at large. In particular, he noted that the mark was the name of a famous race, had been used for many years, had been promoted widely and was the subject of a number of licences. The opposition was therefore successful under Section 5(4)(a).

This decision provides a useful analysis of the interrelationship between the relevant provisions of the Trademarks Act, the Paris Convention and TRIPs in the context of well-known marks, as well as a clear and succinct application of the criteria for establishing well-known status (which followed the guidance set out in WIPO’s joint recommendation). This assessment was cited in Cipriani as being the correct assessment of whether a mark is well known.

In addition to establishing well-known status, it is important to bear in mind the requirement in opposition and cancellation actions to prove a likelihood of consumer confusion arising from the identity or similarity between an essential part of the marks in question and the identity or similarity between the respective goods or services at issue.

Conclusion

Section 56 provides an exceptional type of protection in the United Kingdom for famous unregistered marks and can be a useful weapon in a brand owner’s armoury.

Given that there is no requirement to show goodwill or damage in order to enforce a well-known mark under Section 56, it is interesting that it is not used more often in UK infringement and prosecution actions. This may be due to the relatively high hurdle for establishing that a mark is well known, or because the only remedy available in an infringement claim appears to be an injunction. Perhaps it is because it is seen as an outdated provision and relevant only in limited situations. Owners of famous brands operating in a global market will likely have registrations in all key jurisdictions in which they operate or where they are keen to deter unauthorised exploitation of their brand.

Cipriani and Le Mans are good examples of Section 56 coming into its own. The well-known mark in each case was primarily associated with the provision of services in a specific geographical location. Therefore, perhaps the provision is of most relevance in this situation.

Vicky Butterworth

Of counsel

[email protected]

Vicky Butterworth is an IP lawyer specialising in the management and enforcement of trademarks. She has considerable expertise in conducting trademark litigation in the United Kingdom. Ms Butterworth regularly advises clients in relation to social media and internet issues, such as those involving domain names and keywords, and has conducted proceedings before the Internet Corporation for Assigned Names and Numbers and Nominet.

Jason Chester

Associate