The Trade Mark Act (TMA) also provides that a trade mark which is identical with or similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the UK, and the use of the later mark without due cause would take advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

This provision used to be restricted to registration of the new trade mark in respect of dissimilar goods or services but this was removed by The Trade Marks (Proof of use, etc) Regulations 2004 in recognition of the fact that its effect was to give well known trade marks less protection against the registration of new marks for identical or similar goods or services.

It is critical for anyone opposing an application on the basis of an earlier trade mark under this section to ensure that it produces sufficient evidence of the reputation of its mark in the relevant territories in relation to the period before the application in question is filed.

It is not always easy to determine what constitutes unfair advantage or detriment. The mark TOYS AREN'T US for a charity promoting the welfare of dogs was refused registration as it was held to be detrimental to the TOYS 'R' US mark since, although parody trade marks may be permitted, this particular use would have resulted in TOYS 'R' US becoming associated with cruelty to animals.

By Jane Coyle