Section 56(3) of the Trade Marks Act 1994 does not permit the use of a well-known mark, by other than the proprietor of the mark, if such use began before the commencement of the current law. Rather it ensures that means of other than Section 56(2) must be relied upon to prevent the continuation of any bona fide use of a trademark begun before the commencement of the section; for example, the law of passing off.

Well-known marks used by third parties prior to the entry into force of the relevant provisions of the Trade Marks Act 1994 continue to be protected as they were prior to the entry into force of the 1994 Act. That is, under the common law tort of passing off. The United Kingdom considers that the protection afforded to well-known marks against use by third parties under the law of passing off fully complies with the requirements of Articles 16.2 and 16.3 of the TRIPS Agreement.

To protect its mark under the common law tort of passing off, the owner of an unregistered well-known mark would have to show the following three elements: misrepresentation (which need not be intentional), reputation (sometimes expressed as "goodwill") and damage. The courts in the United Kingdom have given no specific guidance concerning whether a well-known mark must be used in the United Kingdom, or whether the owner of the well-known mark must have goodwill in the United Kingdom. The court will consider each individual case on its merits, according to the specific facts. We are not aware of any recent reported cases on this matter.

As US question 3 correctly surmises, the Trade Marks Act 1994 does not specify explicitly that, in determining whether a trademark is well known, account must be taken of the knowledge of the trademark in the relevant sector of the public and knowledge obtained through promotion of the mark. This standard is established by case law. In determining whether a trademark is well known, a court in the United Kingdom would necessarily have to take account of any and all relevant facts upon which it is addressed. In this respect, the law of the United Kingdom is consistent with Article 16.2 of the TRIPS Agreement.

We are not aware of any case(s) in which the standard of Article 16.2 of the TRIPS Agreement has been established and applied by courts in the United Kingdom.

Introduction The United Kingdom's obligations under Section 4 of Part II of the TRIPS Agreement are met by the Registered Designs Act 1949. The Act was significantly amended by the Copyright, Designs and Patents Act 1988. This latter Act includes in Schedule 4 a copy of the Registered Designs Act 1994 as amended. The Registered Designs Act 1949 provides protection, based upon registration, for designs which are new. Section 1(1) of the Act defines designs as features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye. Excluded from protection are features of shape or configuration of an article which are dictated solely by the function which the article has to perform or are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part. Such exceptions are consistent with Article 25.1 of the TRIPS Agreement. Registration Procedure An application for registration of a design is first filed at the United Kingdom Patent Office in the manner and form prescribed in the Act and the Registered Design Rules 1995. A search and examination is then performed to ensure that the design is new. If it is and the formal requirements specified in the Rules and Act are also met, then a certificate of registration is issued. Registration should normally be completed within six months. Rights Conferred The registration of a design under the Act gives the registered proprietor the following exclusive rights: (a)to make or import for sale or hire or for the purposes of a trade or business; or (b)to sell, hire or offer or expose for sale or hire, an article in respect of which the design is registered and to which that design, or a design not substantially different from it, has been applied. Such rights fully meet the requirements of Article 26.1 of the TRIPS Agreement. The duration of protection for a registered design is up to a maximum of 25 years, renewable at five yearly intervals on payment of the required fee. This exceeds the minimum of ten years protection required by Article 26.3 of the TRIPS Agreement. Available Remedies Although the Act does not specifically state what remedies are available to the proprietor, the usual remedies for intellectual property infringement are available: namely, injunctions, damages or an account of profit, orders for delivery up of infringing articles and costs and interest would apply. Further details on this matter are included in the United Kingdom's responses to the checklist of issues on enforcement of intellectual property rights. (IP/C/5).

Textile designs are protectable in the United Kingdom under the Registered Designs Act 1949 to the extent that they meet its general requirements as to protectability, and by copyright law as artistic works under the Copyright, Designs and Patents Act 1988. Such protection is provided in accordance with Article 25.2 of TRIPS.

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.

Section 5(3) of the Trade Marks Act 1994 mirrors Article 8(5) of Council Regulation (EC) 40/94 which implements the Community trademark system. Regulation (EC) 40/94 became operational on 1 April 1996. To date, Article 8(5) of the Regulation has not been applied in practice. Nevertheless, it should be noted that the reference to "use without due cause" reflects a general principle of law, i.e. a "rule of reason", as a consequence of which the use of a sign, which would in principle constitute trademark infringement under Article 8(5), may be considered justified in exceptional circumstances. In Article 8(5) of the Regulation, this principle is reflected by the wording "without due cause", implying that in exceptional cases, use of a sign which is identical or similar to a registered mark for dissimilar goods or services may be permissible, even where the other elements of trademark infringement apply. It should be stressed that, as a rule, the exception under the rule of reason will not apply. Jurisprudence at the level of the Member States has shown that defences on the basis of the rule of reason have never been successful. In order to successfully invoke the rule of reason, some Member States' jurisdictions require that the user of the sign must prove either that he has an imperative need to use the sign and that he cannot reasonably be obliged to renounce on such use, or that such user proves that he has an own right to use the sign.

As indicated above, the words "the use without due cause" in Section 5(3) of the Trade Marks Act 1994 mirror those in Article 8(5) of Council Regulation (EC) 40/94. Again, it must be left for the Courts (and ultimately the European Court of Justice) to decide precisely what is meant by these words. So far, no such examples have been considered by the Courts.

Section 46 of the Trade Marks Act 1994 requires "genuine use" to maintain registration of a trademark, and not merely "use" which is the subject of Article 19 of the TRIPS Agreement. Once again, the words "genuine use" mirror those in Council Regulation (EC) 40/94. Articles 15 and 50 of Regulation (EC) 40/94 stipulate that if, within five years following registration, the proprietor has not put the Community trademark to genuine use, such mark shall be the subject of the sanctions provided for in the Regulation. In applying Article 19 of the TRIPS Agreement, the courts or other competent authorities of the Members of the WTO will have to interpret the concept of "use". In interpreting this concept, they may well arrive at the conclusion that, for example, the simple advertising of the trademark, with the only objective to prevent cancellation of the mark on the ground of failure to use, does not constitute "use" within the meaning of Article 19 of the TRIPS Agreement. In view of this, the reference to "genuine" use in the said Articles of the Regulation constitute an indication as to how the concept of "use" must be interpreted under Community law.

Section 3(3)(b) of the Trade Marks Act 1994 provides that an application to register a trademark in the United Kingdom shall be refused on absolute grounds if it is of such a nature as to deceive the public as to the geographical origin of the goods. In practice, this means that applications for trademarks which contain or consist of geographical indications with respect to wines or spirits not having such an origin are refused because they could deceive the public as to the geographical origin of the wines and/or spirits. In such cases, there is no need to consider whether there has been, or would be, actual deception. Geographical indications for wines and spirits originating anywhere in the world are thus protected in the United Kingdom by the Trade Marks Act 1994, and the United Kingdom believes that its laws fully comply with the requirements of Article 23.2 of the TRIPS Agreement.

The Registered Designs Act 1949 provides that any government department or any person authorized in writing by a government department may use any registered design for the services of the Crown. Such use includes: (a)the supply to the government of any country outside the United Kingdom under an agreement between that country and the United Kingdom of articles required for the defence of that country or any country whose government is party to an agreement with the UK Government over defence matters; and (b)the supply to the United Nations or a government of any country belonging to that Organization of articles required for armed forces operating under a United Nations Resolution. The Act requires that, unless it would appear contrary to the public interest to do so, the registered proprietor is to be notified as soon as practicable after the use is begun and is to be given such information as to the extent of the use as he may from time to time require. The use of a design by or on behalf of the government after the date of registration shall be on such terms as may be agreed between the government and the registered proprietor or as may be determined by the court in the absence of such agreement. Compensation is also available to the registered proprietor, or to an exclusive licensee, for any loss resulting from his not being awarded a contract to supply the articles to which the design is applied. The only exception to the above is where the Crown has independently developed a design which is not substantially different, prior to the date of registration of the proprietor's design. In such cases, the Crown may continue to use its design free of royalty. Such a limited exception is therefore not considered to unreasonably prejudice the legitimate interests of the proprietor of the registered design and as such is not considered to conflict with Article 26.2 of the TRIPS Agreement. It should also be noted that cases involving the use of a registered design by the government are rare. Indeed the Patent Office, which is the government authority responsible for administering the Registered Designs Act, is unaware of any recent uses of a registered design by or on behalf of the government.

Pursuant to Article 33 of the Greek Trade Marks Law, our country recognizes the right of priority which is based on the principle of reciprocity which is provided by an international agreement. Therefore, the right of priority is recognized on the basis of an earlier trademark application filed in any other WTO Member by a national of a WTO Member according to the Agreement Establishing the WTO.

In compliance with the obligations under the TRIPS Agreement, Hungary is ready to recognize priority rights based on a first filing of a trademark, industrial design and patent application in another WTO Member, irrespective of whether that other WTO Member is a member of the Paris Convention.

Relevant provisions of the Hungarian trademark law in force: -The registered trademark confers on its proprietor exclusive rights to use the trademark with respect to goods and services for which the trademark is registered (Article 7). -Trademark infringement is committed by the unauthorized use of a registered trademark or of a sign confusingly similar to the registered trademark for goods and services identical or similar to those enumerated in the list of goods of the registered trademark (Article 13). It follows from the above that when both the sign and the goods or services are identical, neither the law nor the legal practice requires any proof as to the likelihood of confusion. Should, however, either the sign or the goods or services not be identical but similar, it is the proprietor of the registered trademark who has to allege and to make it probable that there is a likelihood of confusion. No proof to the effect that confusion has in fact occurred in the trade is required. A new law on trademarks is under preparation and is expected to enter into force in July 1997. The draft of the new law contains more detailed provisions on the rights conferred by a trademark, basically in conformity with Article 5 of the EC Council Directive . Accordingly, there seems to be no change insofar that the proprietor of the trademark will not have to prove the likelihood of confusion with respect to the unauthorized use of identical signs for identical goods or services.

The Hungarian trademark law in force does not provide means to act against the above described use. A new law on trademarks is under preparation and is expected to enter into force in July 1997. The draft new law contains a provision according to which the proprietor of a registered trademark shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with or similar to the trademark in relation to goods or services which are not similar to those for which the trademark is registered, provided that the trademark has a reputation in Hungary and where the use of that sign would be detrimental to or would take unfair advantage of the distinctive character or the repute of the trademark.

Relevant provision of the Hungarian trademark law in force: -Trademark protection shall be assignable by contract (Article 12). Under this provision a trademark can be assigned without the transfer of the business to which the trademark belongs. A new law on trademarks is under preparation and is expected to enter into force in July 1997. This provision will be maintained by the draft new law.

Yes. The Trade Marks Act 1996, which came into force on 1 July 1996, provides for recognition of this right of priority. Section 40 of the Act (in conjunction with Sections 2 and 60) automatically provides for priority to be accorded to a trademark application which has been filed in a Paris Convention country. Section 41 of the above-mentioned Act provides that the Government may by order make provision for conferring on a person who has duly filed an application for protection in a country or territory other than a Paris Convention country an appropriate right of priority. This section replaces Section 70 of the Trade Marks Act, 1963, which permitted similar orders to be made in respect of named countries in general. An Order under the latter Act - the Designs and Trade Marks (International Arrangements) (Amendment) Order, 1996 - was made by the Government on 30 January 1996, and is currently in force. A draft Ministerial Order under Section 41 of the 1996 Act is being prepared in such a way as will ensure that, for the future, countries acceding to the WTO will be afforded this right automatically, without the requirement for them to be specified by name in particular Orders (as was necessary under earlier Irish trade marks legislation), and this will be proposed for adoption by the Government at the earliest possible date.

Yes. The Trade Marks Act 1996, which came into force on 1 July 1996, provides for recognition of this right of priority. Section 40 of the Act (in conjunction with Sections 2 and 60) automatically provides for priority to be accorded to a trademark application which has been filed in a Paris Convention country. Section 41 of the above-mentioned Act provides that the Government may by order make provision for conferring on a person who has duly filed an application for protection in a country or territory other than a Paris Convention country an appropriate right of priority. This section replaces Section 70 of the Trade Marks Act, 1963, which permitted similar orders to be made in respect of named countries in general. An Order under the latter Act - the Designs and Trade Marks (International Arrangements) (Amendment) Order, 1996 - was made by the Government on 30 January 1996, and is currently in force. A draft Ministerial Order under Section 41 of the 1996 Act is being prepared in such a way as will ensure that, for the future, countries acceding to the WTO will be afforded this right automatically, without the requirement for them to be specified by name in particular Orders (as was necessary under earlier Irish trade marks legislation), and this will be proposed for adoption by the Government at the earliest possible date.