Brand owners whose registered trade mark appears in a dictionary have been handed new powers to take the publishers to court if they do not make it obvious that the entry is a protected term.
The new laws, which came into force yesterday, are in amendments to the EU Trade Mark Directive, implemented through the Trade Marks Act 1994.
They could help brand owners from falling foul of what is known to IP lawyers as ‘genericide’ – a US term whereby a mark loses its distinctiveness and becomes a generic term for that good or service.
One of the most famous examples of this is is aspirin, previously a trade mark of pharmaceutical company Bayer, which has now become a generic term in jurisdictions including the UK. Others, like Sellotape, Jacuzzi and Google, are still registered trade marks but are often used as generic terms.
According to the Intellectual Property Office (IPO) the changes ‘support innovation and economic growth in the UK, helping to minimise differences between the trade mark frameworks across Europe’.
Under the new system, if a mark is registered, when asked, a publisher must ‘promptly clarify’ that the term is a trade mark or, in the case of printed copies, do so in the next edition. If they do not, then court action can be taken. ‘The court might order the publisher to correct the entry, amend the way the trade mark is reproduced, or to destroy copies of the publication. The court also has a discretion to order other remedies,’ the IPO said.
Other changes which came into force yesterday include the ability to file a trade mark for a sound or motion as an MP3 or MP4 file and the removal of expired trade marks from search reports.
Although the tweaks are based on EU law the IPO said the changes are ’widely supported’ by users of the UK trade mark system. ’We have committed to introduce and maintain them regardless of the outcome of the negotiations surrounding the UK’s exit from the EU,’ it added.