The protection of well-known marks in the UK has, as in the US, been constrained by territoriality principles.15 However, the UK has found ways to at least partially circumvent the principle thanks to recognition of the changing nature of international business and pressure from Eu-ropean harmonisation.
In Anheuser-Busch v Budejovicky Budvar,16 the Court of Appeal found that in order to satisfy the goodwill element of passing off, the senior user must have a business in the UK. The right under passing off is in the goodwill or attractive force that the trader has managed to gener-ate through his business, and not a property right in the mark per se. A mere reputation in the UK, without any business there does not amount to goodwill. Thus, although UK consumers were aware of Anheuser-Busch’s BUDWEISER beer from, inter alia, its inclusion in films and from holidays in the US, no ordinary member of the UK consuming public could purchase the beer in the UK and so Anheuser-Busch had no UK business and no goodwill. Consequently, it could not block the entry of the Czech BUDWEISER BUDVAR beer into the UK.
The implications of the Budweiser judgment, as well as other earlier de-cisions to similar effect17 caused disquiet in the UK. In Pete Waterman v CBS18 Browne-Wilkinson VC noted that improvements in transpor-tation and communication in the second half of the 20th Century had led to the growth of companies with pan-national reputations. Thus, rules regulating goodwill formulated in the 19th Century were no longer ap-propriate to today’s business reality. Observing that “the law will fail if it does not try to meet the challenge thrown up by trading patterns which cross national and jurisdictional boundaries due to a change in technical achievement’,19 he saw no reason why passing off should not protect the relationship between a foreign trader and his UK customers.
15 See Allison Coleman, Protection of Foreign Business Names and Marks under the Tort of Passing Off, (1986) 6 Legal Stud. 70.
16 Anheuser-Busch Inc. v Budejovicky Budvar N.P. (Trading As Budweiser Budvar Brewery) and Others [1984] F.S.R. 413, 462–471 (CA).
17 E.g. Alain Bernadin v Pavilion Properties Ltd [1967] R.P.C. 581.
18 Pete Waterman Ltd and Others v CBS United Kingdom Ltd [1993] E.M.L.R. 27, 50–59 (Ch).
19 P.51.
To qualify for protection in the UK, a foreign trader would need UK customers. However, there was no reason to require the trader to have a place of business in the UK. Following Budweiser (as Browne-Wilkson VC was bound to do as a first instance judge), the presence of these UK customers constituted the “carrying on of a business” in the UK and so could satisfy the goodwill requirement. Thus, the senior user, a record-ing studio based in New York had protectable goodwill in the UK since UK-based recording artists would travel to New York to record in the studio.
Consequently, foreign businesses which do not use the mark as such in the UK can be protected under passing off, but only, it appears, where they have customers in the UK who seek out those goods or services.
Wadlow20 observes that this would mean that “big ticket” services such as hospitals or recording studios, or even prestigious restaurants could have protectable goodwill but more mass-market goods or services that people would not travel for would not. In the age of the internet though, even this assumption might be open to question considering the ease and potential cost savings of obtaining foreign goods online.
The Trade Marks Act 1994 provides further avenue for the protection of well-known marks which are not used in the UK. Section 56(2) allows the proprietor of a trade mark protected as a well-known mark under either the Paris Convention or the WTO Agreement (and hence TRIPs) to obtain an injunction (but not damages) against the use of an identi-cal or similar mark on identiidenti-cal or similar goods where the use is likely to cause confusion. In order to qualify for this protection, the person asserting the right might be either a national of, or must domiciled in, or has a real and effective industrial or commercial establishment in, a country which is a signatory to the Paris Convention and/or the WTO Agreement, other than the UK.21 The protection is afforded whether on not the person carries on any business in or has any goodwill in the UK,22 and thus affords protection where than offered by passing off runs out. However, since it is limited to confusion it is narrower than that envisaged by Art. 16(3) TRIPs and the Joint Recommendation.
20 C. Wadlow, The Law of Passing Off: Unfair Competition by Misrepresentation, London 2004, § 3–81.
21 Section 56(1), read together with section 55.
22 Section 56(1).
The TMA also allows the owners of well-known marks to oppose the registration of conflicting marks, whether or not they have been regis-tered or used in the UK. Section 6(1)(c), which implements Art. 4(2)(d) of the Trade Mark Directive, deems such marks to be “earlier marks”
which can form the basis of an opposition on the relative grounds for refusal in ss 5(1) to (3).23 Consequently, unused but well-known marks can form the basis of a “double identity’, confusion or dilution/unfair advantage opposition, though there is no independent ground of oppo-sition under section 56.24 There have been relatively few decisions under these provisions. However, in Le Mans,25 the Appointed Person26 em-ployed the six factors suggested in the Joint Recommendations to de-termine whether the senior mark was well-known and hence qualified under section 6(1)(c).
Applicants before the Trade Mark Registry have also some success in ar-guing that marks coinciding with their own should not be registered on bad faith grounds. In FIANNA FAIL, FINE GAEL and SINN FEIN,27 the Appointed Person pointed to the ability of the applicant for registra-tion to put pressure on the senior user based on the risk that it (a) would be on the receiving end of an infringement action and (b) could be dam-aged by unsuitable third party use and in AJIT WEEKLY,28 bad faith was found on the basis that the registration by a third party of the name and logo of a newspaper which was well known in the Punjab would de-ceive UK-based Punjabi consumers.
23 The equivalent of Articles 4(1)(a) and (b) and 4(4)(a) of the Directive.
24 See ALLIGATOR Trade Mark BL O-333-10 (10 September 2010) [14].
25 LE MANS Trade Mark BL O-012-05 (8 November 2005) [62].
26 Appointed Persons hear appeals from the Hearing Officers of the Trade Marks Registry.
27 BL O-043-08. Also known as Melly’s Trade Mark Application [2008] E.T.M.R. 41, [56]–[58].
28 AJIT WEEKLY Trade Mark BL O-004-06 [2006] R.P.C. 25, [47].
III. Expanded Protection for well-known Marks
A. Why well-known marks have been granted additional