The Trade Marks Act 1994 is the first major reform of trade mark legislation since the 1938 statute of the same name.The new law means major extensions to what can be called a trade mark and how well that mark is protected once registered.

It is the UK's somewhat tardy response to the European Commission's requirement that EU member states harmonise their trade mark laws (EC Dir 89/104).The new, broader definition of a trade mark is 'any sign capable of being represented graphically which is capable of distinguishing goods and services of one undertaking from that of other undertakings'.'Th e main change is the greater variety in marks and signs capable of registration, combined with wider infringement rights,' said Bill Jones, intellectual property partner with Wragge & Co.So broad is the definition that sounds, like jingles and theme tunes, as well as smells, tastes and gestures could now be covered - so long as there is a way of representing them graphically.'The emphasis of the new Act is on allowing the registration of "signs" which in reality operate as a trade mark even though they did not comply with the technical requirements of the old Act,' says Nabarro Nathanson partner Andrew InglisThe new shape provision applies to products like Toblerone chocolate, or the curved Coca Cola bottle, which was the subject of an unsuccessful application for registration ([1986] 2 All ER 274).However, if a shape is needed to produce a technical result, say a three-pin plug, or because it is in the nature of the goods - the loaf-shape for bread, for example - it is not registrable.

Nor is a shape which adds 'substantial value to the goods', though there is considerable uncertainty as to how this may work in practice.According to Mr Inglis: 'From a lawyer's point of view, the Act is very unclear in the language it uses, much of which has been imported from the continent.

The result is that there will be a significant amount of litigation while the courts sort out exactly what the Act means.'One area of relative clarity is the use of place names as registered trade marks, which is now allowed: the House of Lords case, which prevented York being registered as a make of trailer even though the mark was distinctive ([1982] FSR 111), is now overturned.The new range of the Act is supported by greater protection for marks registered before or after its coming into force.

Previously, infringement occurred when an unauthorised person applied the trade mark, or one confusingly similar, to goods or services identical to those already registered (there are 42 classes).

Now the law will be infringed if the mark is used simply on 'similar' goods or services (provided it can be shown that there is a 'likelihood of confusion' on the part of the public).Looser wording comes with the provision that it can be an infringement if the 'likelihood of association' with a registered trade mark results from the action of an unauthorised user.One example of this could be the row over the introduction of Classic Cola by Sainsbury earlier this year.

Under the old law, Coca Cola would have had to have proved that the public was likely to confuse the product with 'the real thing'.But, in the light of the 1994 provisions, it could be argued that the similarity in appearance of the products is so great that the public thinks it is not just a case of an 'own brand cola', but, by visual association, of an 'own brand Coca Cola'.Mr Jones wonders whether survey evidence will be admissible when the courts hear arguments over 'association' under the new regime.Despite intense lobbying by the manufacturers of branded goods, the new Act does not specifically prohibit supermarkets selling own-brand products which resemble those of the big brand names.However, even where goods and services are not similar, the new Act extends protection where the mark relates to a product having a 'reputation'.

It is now an infringement to take unfair advantage of, or make use of, the mark in a manner detrimental to its distinctive character or repute.An example of this phenomenon already exists in US case law where luxury chocolatiers Godiva made a legal com plaint about the pet food manufacturers who launched Dogiva dog food.In addition to the reputation provisions, the owner of a well-known trade mark, even if not registered or trading in the UK, will be able to obtain an injunction preventing the use of an identical or similar mark in a way that might cause confusion in this country.

This will help in sectors like tourism, cinema and export industries such as the brewing of premium 'export' beers.Another area with room for legal uncertainty is that of comparative advertising, made legal under the new Act so long as it is in accordance with 'honest practices in industrial or commercial matters'.Mr Jones thinks the overall effect of the new Act will be to require greater care of companies before they adopt new marks.

'They will have to search not only against similar goods, but also further afield.

The scope of those searches is certainly going to be broader,' he said.Nabarro's Mr Inglis reckons that it will, from this week, be trickier to use a mark without first registering it.

It seems that, more than ever before, the magic - will be appearing after product names.