My Lords, I beg to move that these draft regulations, which were laid before the House on 19 July 2022, be approved.
The UK’s intellectual property system is consistently rated as one of the best in the world. The Government are committed to ensuring that we maintain that position. These regulations relate to a specific branch of the UK’s IP system—trademarks, and in particular well-known trademarks. A well-known trademark is a mark that is considered reputable and which the general public commonly knows about, such as Rolls-Royce or Google. Trademark law gives special protection to these marks, in the light of their recognition and reputation. This protection is irrespective of whether or not they are registered in the UK.
As the Committee will know, the United Kingdom has signed a trade and co-operation agreement with the EU, which sets out the new UK-EU relationship following the UK’s withdrawal from the EU. Here, the UK sought robust provisions to maintain a high level of protection and enforcement for intellectual property rights, including for trademarks. These contain dedicated provisions for well-known trademarks.
The UK-EU TCA placed a binding commitment on both parties to apply an international standard for the protection of these special marks. That standard is the World Intellectual Property Organization’s joint recommendation on the protection of well-known marks, adopted in 1999. The UK played an instrumental role, as a member of the committee of experts, during the preparation of these international recommendations between 1995 and 1997.
Although it had been considered, when negotiating the TCA, that UK trademark law was consistent with the joint recommendation, we have since identified the need to make a technical amendment to our existing provisions for well-known marks to bolster the protection afforded to these special rights. This will deliver on our commitment to the TCA and the WIPO’s recommendation on well-known marks.
This instrument has three objectives. First, it amends the Trade Marks Act to provide owners of a well-known mark that is not registered with an additional remedy against infringement. We already have provisions in place for holders of unregistered well-known marks to stop the use of a conflicting trademark where it is being used on the same or similar goods and services. This technical amendment will change the law so this benefit can now also apply when a conflicting mark is being used on dissimilar goods and services.
As an example, a famous brand such as Rolex can rely on well-known mark provisions when its name is unjustly being used not only on watches and similar goods, such as clocks, but on sports equipment or even cleaning products. In particular, this applies where that use is likely to damage Rolex’s interests or take unfair advantage of the distinctive character or repute of the Rolex mark.
Secondly, this SI will amend existing trademark law to ensure that this new remedy, and all the existing provisions for unregistered well-known marks under UK law, will now apply equally to UK nationals, so our own nationals will enjoy the same benefits as those provided to third-country nationals.
Thirdly, these changes will ensure that we fulfil our international obligations. As described previously, this includes those found within the UK-EU TCA, but it will also place the UK in the strongest position to negotiate safeguards abroad for the protection of well-known marks of British companies within the context of future trade agreements.
I turn to the impact of the SI. Due to the special nature of well-known marks and the niche nature of these IP rights, the impact is anticipated to be modest in terms of extra cases being taken to the Intellectual Property Office’s tribunal or the courts. However, as already outlined, these changes are important to safeguard the robust functioning of our well-known mark provisions and to adhere to our international obligations. Stakeholders have confirmed that these amendments are a welcome addition to trademark law. The Intellectual Property Office will prepare guidance to help businesses that fall into the scope of these changes to deal with any impacts that the changes have on them.
In conclusion, these regulations relate to a niche area of trademark law but will ensure robust protection for unregistered well-known marks, and that the UK meets its international commitments. I hope noble Lords will support the draft regulations. I commend them to the Committee.