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'New trade mark rules do not go far enough'.

BRAND owners have welcomed the introduction of the 1994 Trade Marks Act, which came into force on Monday, but claim "it does not go far enough".

John Murphy, spokesman for British Producers and Brand Owners Group, told The Grocer: "Retailers could still introduce a product which has a similar shape, label or colour to the brand but does not infringe the specific trade mark application. So if the overall intention is to steal the trade dress, it can still be done.

"Although suppliers are now a bit better off, the 1994 Act is only an extension of the 1938 legislation," he added.

Meanwhile, this week an Oxford firm of solicitors, Dallas Brett, warned brand owners they could face new challengers.

A spokesman explained: "Previously a competitor could escape infringement if he used a mark identical or similar to one on the register, provided the goods to which he applied it were not covered by the registration. For example, a mark registered for cheese could not be used to stop the same one being used for butter. Now the owner will be able to take action to prevent its use.

"Taking this a step further, UK law has now recognised that the owner of a famous name, eg Findus, if sufficient reputation is demonstrated, may prevent its use on any goods, even ones not covered by registration. Action can now be taken if unfair advantage is made of the name, eg Findus clothing, or if it causes detriment to it distinctive character, eg Findus dog food," the spokesman concluded.

The trademarks registry is to start application numbers from 2,000,000. Over 300 companies qualified to apply for the first one, 2,000,001, by filing an application, by hand. A draw will take place on Thursday to select the winner.

Amongst those in the running are Coca-Cola and Bass.

Under the new Act, three dimensional shapes, tastes, smells and sounds, such as jingles, can now be registered.

Collective marks are also being introduced. This will mean that regional trade associations will be able to enrol that area s name.

The Dallas Brett spokesman told The Grocer: "This would have made the Champagne producers' action last year against Elderflower Champagne much easier if it could have been based on the automatic rights granted by registration, rather than passing off which is much harder to prove."

Geographical words such as Worcestershire Sauce can now be recorded provided the distinctiveness of the mark can be demonstrated.

Another major development is the ability to make a single application which will cover several countries.

The spokesman concluded: "A curiosity of the old law was that spoken use of mark could never be an infringement -- it now will be. Until now it has also been possible to threaten to sue for trade mark infringement without following it up with legal action. Groundless threats will now be banned and damages may be payable to those aggrieved."
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Title Annotation:brand owners criticise new Trade Marks Act
Date:Nov 5, 1994
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