Section 6(1) of the Trade Marks Act 1994 defines the meaning of "earlier trademark" as used throughout the Trade Marks Act 1994. Sub-section (c) fulfils the United Kingdom's obligations under Article 6bis of the Paris Convention by ensuring that well-known trademarks are considered to be prior rights. Section 56(2) entitles the proprietor of a well-known mark to restrain by injunction the use in the United Kingdom of identical or similar marks in respect of the same or similar goods, even if the well-known mark is not registered as a trademark in the United Kingdom.
Section 5(3) implements Articles 4(3) and 4(4) of the European Council Directive of 21 December 1988 to approximate the laws of the Member States of the European Communities relating to trademarks (89/104/EEC). In so doing, it extends beyond the protection required by Article 16.3 of the TRIPS Agreement to cover registered trademarks which have a reputation, and not merely registered trademarks which are considered to be well-known.
However, in the United Kingdom, the matter of whether a mark is well-known or whether it has a reputation are questions which must ultimately be left for the Courts to decide. Nevertheless, the United Kingdom is confident that the requirements of the TRIPS Agreement are fully met in this respect.
