Trade Marks Act 1994

Overview

What is a Trade Mark?

A 'Trade mark' is any sign which is capable of: 

• being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
• distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging. 

A key aim of the Trade Marks Act 1994 is to ensure that trade mark owners and business operators were given the protection they deserve, as well as providing clear steps businesses could take in avoiding infringing upon the IP of others.

Background to the Act 

The Trade Marks Act 1994 was imposed to make new provision for registered trade marks, implementing Council Directive No. 89/104/EEC of 21st December 1988 to approximate the laws of the Member States relating to trade marks; to make provision in connection with Council Regulation (EC) No. 40/94 of 20th December 1993 on the Community trade mark; to give effect to the Madrid Protocol Relating to the International Registration of Marks of 27th June 1989, and to certain provisions of the Paris Convention for the Protection of Industrial Property of 20th March 1883, as revised and amended; and for connected purposes.

The introduction of new primary legislation for trade marks in 1994, in the form of the Trade Marks Act 1994, enabled the government to make a number of changes beyond merely implementing the EU Directive. These include:

• Removing the two-part registration system - under the 1938 Act, trademarks were registered into two distinct parts (Part A and B) with different distinctiveness requirements
• Allowing applications to multiple classes
• Ensuring the registration requirements for goods and services are as similar as possible

The Act also provides for a defence of honest use of a natural name provided there is sufficient evidence and documentation.