The majority of the world’s participants in the Paris Agreement, including the UK and the EU, are required to protect trademarks that are well known to the public in their individual jurisdictions through their national laws.
Section 56 of the UK Trade Marks Act 1994 clearly defines the protection for well-known marks in the country.
Nevertheless, the protections in section 56 were only available to overseas owners of well-known trademarks (a draft that some would argue was somewhat irrational).
Owners of well-known trademarks in the UK who also had their main place of business there were not covered by section 56’s protections.
Technically, this didn’t really matter because UK owners could still protect their well-known trademarks whether they were registered in the UK or not through other sections of the UK Act or the common law of passing off.
However, the UK committed to address this omission before it left the EU and to broaden the protections offered to well-known trademarks to include unauthorized uses of both the same and similar as well as different goods and services.
The World Intellectual Property Organization, the guardian of the Paris Agreement and other international agreements on intellectual property, had advocated this expanded protection against identical goods and services that were mistakenly identified with a well-known trademark.
In the interest of maintaining its commitment, the UK amended section 56 of the UK Act to provide the well-known trademark protections that were necessary. These amendments took effect at the end of December 2022.
Owners of well-known registered or unregistered trademarks in the UK who are based in the UK can now use section 56 to protect their trademarks.
Furthermore, all well-known trademarks in the UK are now protected from unauthorized use in connection with unrelated goods and services.
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