The set of regulations and laws that regulate the trademark regime in England can be found in

the trademark act of 1994 as amended as well as trademark rules 2008. Along with the
statutory instruments directives of the European Union, meant to harmonise the legal regimes
regulating trademark also impacts the statutory desirable conditions for registration.
Another set of rules that regulates the registration and protection of trademark is the common
law doctrines developed by the courts with respect to the matter. in this chapter first the
common law principles relating to trademark will be analysed in the first part, followed by
the important features of the TMA act 1994 as amended in 2008 as well as the trademark
rules 2008 finally the important provisions of the council regulation and the council directive
will be referred to in the end.

The trademark act 1994

The trademark act 1994 replaced the earlier trademark act of 1938, which was the result of an
EU directive. The preamble of the act itself states as purpose “the implementation of Council
Directive No. 89/104/EEC of 21st December 1988, to unify the existing trademark laws in
member nations as well as to give way to the concept of “community trade mark” by making
provisions in accordance with Council Regulation (EC) No. 40/94 of 20th December 1993.

The act defines trademark in section 1 as “any sign capable of being represented graphically
which is capable of distinguishing goods or services of one undertaking from those of other
undertakings”.1 Trade mark as per the act may consist of words, numerals, shape of goods, or
their packaging and names. The grounds for refusal of a trademark as provided by the act
includes
 “signs which do not satisfy the requirements of section 1(1),
 trade marks which are devoid of any distinctive character,
 trade marks which consist exclusively of signs or indications which may serve, in
trade, to designate the kind, quality, quantity, intended purpose, value,
 geographical origin, the time of production of goods or of rendering of services, or
other characteristics of goods or services,
 trade marks which consist exclusively of signs or indications which have become
customary in the current language or in the bona fide and established practices of the
trade”.2
Although a particular trademark falls into any of the abovementioned criterion, it shall not be
denied registration under the act if it has achieved distinctive character as a result of use of
the particular trademark.3
The act also provides for the the relative grounds for refusal if the trademark sought
registration consists of:
1. “the shape of the goods
 Resulting from the very nature of the goods.
 Necessary to obtain technical results.
 Which gives subsgtantial value to the goods”.4
2. shape which is contrary to public morality or policy.5

1
Trademark act 1994, Section 1.
2
Ibid, section 3.
3
Id., section 3, provisio.
4
Id., section 3(2).
5
Id., Section 3(3)(a).
3. if the purpose is to deceive the public.6
4. if the application is made in bad faith.7
5. a trademark that consists of symbols as provided in the act.8
6. a trademark that contains representations of flags of any country.
A trademark cannot be reistered under the act if it is similar to the earlier trademark and
identical to the goods covered by the said trademark, vice versa or the use of such trademark
is detrimental to the interest of the proprietor of earlier trademark. The registration may also
be prevented if the “use of the proposed trademark is liable to be prevented
1. by any law of passing off
2. by any other law in force in the territory of England”.9
However if the proprietor of the earlier trademark consents to the use, then such trademarks
may be registered.10

The act also provides for registration of similar trademarks if the earlier trademark has not
been put to commercial use within five years from the date of publication.11 However if
proper and adequate reasons can be shown for the non use this provision will not apply.12 If
the non use can be restricted to any particular class of goods then the trademark shall be
considered invalid with respect to that particular class alone.13

infringement

The council regulation of 40/95 14 and the trademark directive 89/104/EEC which dealt with
the community Trade mark, sought to synchronize protections afforded to and the registration
procedures of trade marks within the European Union. The mark, to be entitled for protection
must posess a reputation in the member state. The reputation criterion is determined by taking
into account the level of awareness among the public.

6
Id., Section 3(3)(b).
7
Id., Section 3(6).
8
Id., Section 4(1).
9
Id., Section 5.
10
Id., Section 5(5)
11
Id., Section 6A.
12
Id., Section 6A(3)(b).
13
Id., Section 6A(6).
14
Id., Section 4(2).