Trade Marks (Amendment) Regulations 2022

Lord Palmer of Childs Hill Excerpts

Tuesday 25th October 2022 Grand Committee

[Baroness Bloomfield of Hinton Waldrist (Con)]

My Lords, I beg to move that these draft regulations, which were laid before the House on 19 July 2022, be approved.

The UK’s intellectual property system is consistently rated as one of the best in the world. The Government are committed to ensuring that we maintain that position. These regulations relate to a specific branch of the UK’s IP system—trademarks, and in particular well-known trademarks. A well-known trademark is a mark that is considered reputable and which the general public commonly knows about, such as Rolls-Royce or Google. Trademark law gives special protection to these marks, in the light of their recognition and reputation. This protection is irrespective of whether or not they are registered in the UK.

As the Committee will know, the United Kingdom has signed a trade and co-operation agreement with the EU, which sets out the new UK-EU relationship following the UK’s withdrawal from the EU. Here, the UK sought robust provisions to maintain a high level of protection and enforcement for intellectual property rights, including for trademarks. These contain dedicated provisions for well-known trademarks.

The UK-EU TCA placed a binding commitment on both parties to apply an international standard for the protection of these special marks. That standard is the World Intellectual Property Organization’s joint recommendation on the protection of well-known marks, adopted in 1999. The UK played an instrumental role, as a member of the committee of experts, during the preparation of these international recommendations between 1995 and 1997.

Although it had been considered, when negotiating the TCA, that UK trademark law was consistent with the joint recommendation, we have since identified the need to make a technical amendment to our existing provisions for well-known marks to bolster the protection afforded to these special rights. This will deliver on our commitment to the TCA and the WIPO’s recommendation on well-known marks.

This instrument has three objectives. First, it amends the Trade Marks Act to provide owners of a well-known mark that is not registered with an additional remedy against infringement. We already have provisions in place for holders of unregistered well-known marks to stop the use of a conflicting trademark where it is being used on the same or similar goods and services. This technical amendment will change the law so this benefit can now also apply when a conflicting mark is being used on dissimilar goods and services.

As an example, a famous brand such as Rolex can rely on well-known mark provisions when its name is unjustly being used not only on watches and similar goods, such as clocks, but on sports equipment or even cleaning products. In particular, this applies where that use is likely to damage Rolex’s interests or take unfair advantage of the distinctive character or repute of the Rolex mark.

Secondly, this SI will amend existing trademark law to ensure that this new remedy, and all the existing provisions for unregistered well-known marks under UK law, will now apply equally to UK nationals, so our own nationals will enjoy the same benefits as those provided to third-country nationals.

Thirdly, these changes will ensure that we fulfil our international obligations. As described previously, this includes those found within the UK-EU TCA, but it will also place the UK in the strongest position to negotiate safeguards abroad for the protection of well-known marks of British companies within the context of future trade agreements.

I turn to the impact of the SI. Due to the special nature of well-known marks and the niche nature of these IP rights, the impact is anticipated to be modest in terms of extra cases being taken to the Intellectual Property Office’s tribunal or the courts. However, as already outlined, these changes are important to safeguard the robust functioning of our well-known mark provisions and to adhere to our international obligations. Stakeholders have confirmed that these amendments are a welcome addition to trademark law. The Intellectual Property Office will prepare guidance to help businesses that fall into the scope of these changes to deal with any impacts that the changes have on them.

In conclusion, these regulations relate to a niche area of trademark law but will ensure robust protection for unregistered well-known marks, and that the UK meets its international commitments. I hope noble Lords will support the draft regulations. I commend them to the Committee.

[Lord Palmer of Childs Hill (LD)]

My Lords, first, I thank the Minister for her introduction to this SI. It is framed to substitute a connection country with the United Kingdom, and it appears to make no attempt to improve or explain the Trade Marks Act 1994. This seems a missed opportunity. What constitutes a known trademark? Is being well known a moving target? You can be well known today but disappear from sight tomorrow. Where is the dividing line? Who decides? It really worries me who decides who is well-known.

The Minister used Rolex as an example. I do not know how many people in this Chamber are interested in that top end of the market, but a lot of other trademarks are in much more use by the general populace. I was trying to think which trademarks would be referred to. I did not think of Rolex, but would it include Woolmark, BS984, which I think would concern large numbers of the population. How does it affect things such as champagne: is that protected in any way?

Furthermore, is the trademark national or international? The Minister talked about how the provision gives protection in overseas markets, but the SI seems to concentrate on Section 56 of the 1994 Act and does not really go beyond it. What happens if a trademark has a reputation elsewhere in the UK: does the SI protect it in the UK and elsewhere?

The Minister spoke about services. The SI talks about trademarks, but there are also service marks, which the SI does not mention at all. There is nothing wrong with the SI, but it seems to have missed an opportunity. Things have moved on since 1994, but we are concentrating only on Section 56 of the 1994 Act and nothing else. Can the Minister address some of those concerns?

[Baroness Blake of Leeds (Lab)]

I shall be interested to hear the response of the Minister to the questions of the noble Lord, Lord Palmer. I thank the Minister for her fulsome explanation of where we are and why the instrument is necessary, of course noting that the regulations are subject to the affirmative procedure.

I notice that the Intellectual Property Office considered alternative options to addressing the commitment undertaken by the UK under the TCA, but there were no viable alternatives—which suggests that some alternatives were considered. I just wonder whether there will be an opportunity to review the impact of the SI and ensure that we keep up to date, ensuring for everyone involved that it is fit for purpose as time goes on.

[Baroness Bloomfield of Hinton Waldrist (Con)]

Excuse me, I am seeking divine guidance. I wanted to give an example of a trademark that might be unregistered but would still get protection under the instrument. I keep coming back to Coca Cola and Rolex, which I recognise are both registered trademarks. The whole point of the SI is that we in the department discovered the EU was unaware that we had a bit of a hole in our legislative cover for trademarks, so the SI has a very specific purpose: to try to plug that hole to give protection to trademarks that were otherwise not protected by the original legislation.

The noble Lord mentioned things such as champagne, but I think that is a confusion with geographical indications, which are used on products specifically protected as a term because of where they come from—such as Melton Mowbray pork pies or champagne, which have to be produced in a particular region. That is why that would not fall within the scope of this SI.

I have very few other specific answers that I can give the Committee at this stage. If noble Lords bear with me, I will write with specific answers to the questions, particularly those from the noble Baroness, Lady Blake. I hope noble Lords will agree that this SI is necessary for a very specific and small purpose, and I commend the regulations to the House.

[Lord Palmer of Childs Hill (LD)]

Could the Minister address the comment that I made about service marks? She mentioned them in her speech, but they are not mentioned here.

[Baroness Bloomfield of Hinton Waldrist (Con)]

At this point, I do not think that I can go any further than the comments I made in my speech, but I will include that in a full letter after this session.