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Trade Marks

Law and Practice

FROM £67.50

A concise account of UK trade marks law within the European and international context.

Trade Marks: Law and Practice is a concise account of UK trade marks law within the European and international context. Written by Alison Firth and expert co-authors, this text deals with all the relevant domestic and international developments.

The text incorporates and analyses the ongoing amendments to the Trade Marks Act 2004, amendments to the Trade Marks Rules 2000 and the expansion of the system of international registration of trade marks under the Madrid Protocol and the International Trademark Treaty. The appendices include helpful consolidated versions of the Act and the Rules.

The new edition updates developments in case law and legislation from both UK and EU perspective and takes into account:

  • NICE class headings and classification of good - IP Translator case
  • KitKat shape mark decisions
  • Abrogation of graphical representation requirement
  • The use of trade mark functions as a limiting device in infringement 
  • Autonomous concepts of trade mark law identified by the Court of Justice of the EU 
  • EU certification 
  • EU Reform Trade Mark Provisional Agreement relating to proposed changes to Community Trade Mark Regulation which include changes to CTM terminology
  • IP and Company Commercial lawyers advising on trade marks 
  • The commercial functions of a trade mark
  • The mark itself
  • Legal modes of protection
  • Limits of trade mark protection 
  • Registration 
  • Using the mark
  • Pursuing infringements
  • Defending infringement proceedings  
  • Cancellation of UK registrations
  • Licensing others to use the mark
  • Assignment of marks
  • Special category marks
  • Trade marks and European Union Law
  • The community trade mark
  • Trade mark systems worldwide: International co-operation and harmonisation 
  • Internationals registration: The Madrid agreement and protocol 
Read the full review by Phillip Taylor and Elizabeth Taylor of Richmond Green Chambers for the 4th edition

Review of the previous edition

"no UK trade mark lawyer - especially one whose practice includes overseas clients - should be without this thorough, concise and useful book"
Click here for the full review
An appreciation by Phillip Taylor MBE and Elizabeth Taylor of Richmond Green Chambers
Courts and legislators have been busy since the last edition of Trade Marks: Law and Practice was published in 2012. At that time, a ‘Study on the Overall Functioning of the European Trade Mark System’ for the European Commission by the Max Planck Institute for Intellectual Property and Competition Law in Munich had been published (in 2011). Its analyses of law, economics and user perceptions of the trade mark system suggested that some reforms were desirable. While this edition was under preparation, in December 2015, amendments to the Community Trade Mark system were promulgated in the form of an amending Regulation (EU) 2015/2424. Those amendments included changes of name – EU Trade Mark, EU Intellectual Property Office, etc. A new trade marks harmonisation Directive (EU) 2015/2436 contained parallel provisions to be implemented into national laws of Member States by January 2019 (later for some provisions).

The Court of Justice of the EU has been developing its jurisprudence on the functions of trade marks, and on the identification of autonomous concepts of EU trade mark law. These cases, especially those on reference from the courts of Member States, were driven by many factors, but particularly the growth of online trade. Some of the Court of Justice’s decisions have perplexed or exasperated the UK courts.

In the meantime, a referendum on leaving the EU or staying has been announced for June 2016. In the event of British exit from the EU, would the UK’s trade mark landscape change dramatically? ‘Brexit’ would certainly generate the need to file or designate national registrations to replace protection currently conferred by Community/EU trade marks, both for UK proprietors and users of the Madrid system for the international registration of marks. Trade mark proprietors who have exercised caution about abandoning national rights in favour of seniority claims under the EU system would have reason to be glad. The courts and litigants might relish the freedom to not follow the more Delphic rulings of the Court of Justice. There would be more freedom for Parliament to fashion new legislative defences to infringement. But it is submitted that UK trade mark law would not necessarily diverge widely from its current path. Draft EU trade mark law formed the basis of the WTO TRIPs text in relation to the registration of marks and the scope of protection conferred (though not defences). The UK would probably join other Commonwealth countries in looking to the Court of Justice as persuasive authority on many matters.

Whatever happens, there will be significant further developments. We have attempted to incorporate the new EU rules into this edition as explicitly as possible, in order to equip readers for exciting times ahead. In particular, the new edition incorporates practice developed by the EU/Member State Convergence Programme in relation to NICE class headings and classification of goods (consequent upon the IP TRANSLATOR case), the ruling of the Court of Justice on the KitKat shape mark and of the Court of Appeal on Cadbury’s application to register the colour purple for chocolate packaging, decisions of the courts on trade mark functions and other concepts, the future introduction of EU certification marks and international developments affecting the UK.

This edition was up to date as at 29 February 2016.

Peter Cornford, Bristol
Alison Firth, London
Gary Lea, Canberra


1.1 Human society uses signs, symbols or marks in many ways.  Name tags, cattle brands and shipping symbols indicate ownership of chattels. Car registration numbers may be used to trace a person having charge of the vehicle, and ‘special’ or ‘personalised’ registration numbers are valued highly.  A plant variety name identifies a plant with specific genetic makeup.  Indications of geographical origin speak volumes on the characteristics of products, especially foodstuffs.  Domain names facilitate navigation of the web.  Tartans indicate Scottish clan affiliations. When a commercial undertaking provides goods or services, trade marks or brand names provide important information as to the nature and origin of those products. Such information is essential to the functioning of a competitive market. Trade marks may provide incentives for corporate social responsibility.  and assist innovation.  This book seeks to explain how the indicative value of trade marks is protected by law in the UK and Europe, and to outline the international systems and influences under which this law operates.

1.2 The UK’s Trade Marks Act 199410 (‘the 1994 Act’) made major changes to the UK law of registered marks. It implemented the European Community’s First Council Directive (‘the Directive’) to approximate the trade marks laws of member states. That Directive, in turn, by ironing out differences in national trade mark laws was designed to pave the way for the unitary system of Community trade mark protection. Both these Community instruments were promulgated in the interest of transparent competition and free movement of goods and services in the Community’s internal market. The goal of providing uniform protection for intellectual property through the European Union is now enshrined in Art 118 of the Treaty on the Functioning of the European Union (TFEU), which confers specific legislative power in this area. The 1994 Act also enabled the UK to take advantage of developments in the international filing of trade marks provided by the Madrid Protocol. The 1994 Act demonstrates the UK’s compliance with its obligations under the venerable Paris Convention for the Protection of Industrial Property and under the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement of 1993.

1.3 Interpretation of the 1994 Act by the courts may involve traditional techniques of statutory construction, together with the possibility of referring to parliamentary debates (‘Hansard’) in cases of ambiguity, obscurity or absurdity as outlined in Pepper v Hart. However, as Aldous LJ put it in Arsenal  Football Club plc v Reed: ‘The Trade Marks Act 1994 swept away the old law and implemented the Directive. It follows that the provisions of the Act must be construed so as to reflect the terms of the Directive. ’In interpreting the 1994 Act, therefore, UK courts have increasingly turned to the texts of Community Trade Mark Regulations (EC) 40/94, subsequently (EC) 207/2009 (the Regulation), and the Directive and to the rapidly developing case-law of the Court of Justice of the European Union (CJEU), formerly European Court of Justice (ECJ)) under the Directive and Regulation. Opinions of the Court of Justice on referred questions of interpretation of the Directive are binding. Because many substantive provisions of the Regulation are identical to corresponding provisions of the Directive, decisions of the Court of First Instance on appeal from the Office for Harmonisation in the Internal Market (OHIM) and of the full ECJ on further appeal are highly persuasive. The Court of Justice has identified a number of ‘autonomous concepts’ of EU trade mark law. Preparatory works generated by the European institutions, for example, the Commission and Council’s statements for inclusion in the minutes of adoption of the Regulation, were thought to be available to guide the courts as a matter of Community law, but national and European courts and OHIM showed scant regard for these statements. The UK Trade Marks Registry, part of the UK Intellectual Property Office, inevitably has regard to the decisions and practices of the OHIM and the Court of Justice. Accordingly, in this book we shall refer to all these sources, both in relation to the 1994 Act and to marks protected in the UK through registration under the Regulation or under the Madrid Protocol for the international registration of marks.


1.4 In order to analyse the effects of the 1994 Act and to identify areas of uncertainty or difficulty, it is useful first to examine the functions of trade marks. In previous statutes, one can discern the trade mark acting as a kind of ‘golden thread’ linking a product to its source – trade marks were said to indicate a ‘connection in the course of trade’ between the proprietor of the mark and the products for which the mark was used. Section 2 of the Trade Marks Act 190532 helpfully spelled out varieties of connection which a trade mark might indicate: ‘… manufacture, selection, certification, dealing with or offering for sale.’ No such examples were listed in the Trade Marks Act 1938 (‘the 1938 Act’); by then it was recognised that patterns of trade develop and change. In particular, it was accepted that there could be an appropriate connection between a licensor and licensed goods, provided that adequate control was exercised over their quality.

1.5 To indicate a trade connection, the mark must enable someone to distinguish goods or services which enjoy such a connection from those which do not. Section 1(1) of the 1994 Act provides that a ‘trade mark’ means ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings’. Despite the change of wording from previous statutes, it is submitted that the concept of a trade mark did not change significantly in 1994. Affirmation of the trade mark’s role as indicating a trade connection between proprietor and product appeared in Advocate-General Jacobs’ opinion in Holterhoff v Freiesleben: ‘Use of a trade mark involves identifying the proprietor’s goods or services as his own. Although perhaps so self-evident that it may not be specifically set out in trade mark legislation, that is the purpose for which trade marks exist …’.

1.6 A good trade mark will be distinctive, attractive and memorable, generating a frisson of favourable connotations. The information carried by the mark is concentrated in concise, symbolic form. Like a poem, the information content and uses of a trade mark depend not just upon its inherent and perceptible features, but also on the characteristics of the perceiver, especially the extent to which he has been educated in the significance of the mark. A newly coined sign may be highly distinctive, in the sense of very different from previously known images or words, but it becomes a trade mark distinctive of an undertaking and its products only when the public has learned to make the appropriate associations. For example, when ‘Orange’ mobile telephony services were launched, the concept of using a colour in combination with the equivalent word as the trade mark for a service was unusual.36 It is unlikely that consumers would have known, without being told, that the colour and word ‘Orange’ denoted a particular supplier’s mobile network service.

Advertising influences the public’s appreciation of a mark but changing social conditions play their part too. The effect of a mark may be altered by current affairs and the activities of third parties, as well as by the activities of its proprietor. An important action is to register the mark for goods or services for which it is used (or intended to be used); this signals the proprietor’s interest to the world at large and confers better protection against imitators. EU trade mark legislation, its application and interpretation have led to significant developments in the law of registered marks, as outlined below.

1.7 Trade-marked ‘products’ may be goods or services. An undertaking may incorporate its trade mark in a business name, or in a domain name to attract customers navigating the internet.40 Since a mark takes colour and meaning from its surroundings and from the mind-set of customers, the message conveyed by a mark may vary as goods travel along a chain of distribution, or as a service is extended to a wider range of users. At this stage, we will turn to the personalities interested in trade marks and the functions of a trade mark as between the various parties.

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