Trade Marks Act 1994

56 Protection of well-known trade marks: Article 6bis.U.K.

(1)References in this Act to a trade mark which is entitled to protection under the Paris Convention [F1or the WTO agreement] as a well known trade mark are to a mark which is well-known in the United Kingdom as being the mark of a person who—

(a)is a national of [F2the United Kingdom or] a Convention country, or

(b)is domiciled in, or has a real and effective industrial or commercial establishment in, [F3the United Kingdom or] a Convention country,

whether or not that person carries on business, or has any goodwill, in the United Kingdom.

References to the proprietor of such a mark shall be construed accordingly.

(2)The proprietor of a trade mark which is entitled to protection under the Paris Convention [F1or the WTO agreement] as a well known trade mark is entitled to restrain by injunction the use in the United Kingdom of a trade mark which, or the essential part of which, is identical or similar to [F4the well known trade mark—

(a)in relation to identical or similar goods or services, where the use is likely to cause confusion, or

(b)where the well known trade mark has a reputation in the United Kingdom and the use of the other trade mark—

(i)is without due cause, and

(ii)takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the well known trade mark.]

This right is subject to section 48 (effect of acquiescence by proprietor of earlier trade mark).

[F5(2A)Subsection (2)(b) applies irrespective of whether the goods or services in relation to which the other trade mark is used are identical with, similar to or not similar to those for which the well known trade mark is entitled to protection.]

(3)Nothing in subsection (2) affects the continuation of anybona fide use of a trade mark begun before the commencement of this section.

Textual Amendments

F1Words in s. 56(1)(2) inserted (29.7.1999) by S.I. 1999/1899, reg. 13(4) (with reg. 14(1))