Monday, 14 January 2019

Revised Trade Marks Act: generic use in dictionaries

Today is the day the revised Trade Marks Act 1994 comes into operation. The changes have been brought about by the Trade Marks Regulations 2018 (SI No 825), and implement the EU directive 2015/2436. My friend Jane Lambert has written about it on her NIPClaw blog so I don't feel the need to deal with it all - although I am preparing a recorded lecture. But one provision does strike me particularly.

New section 99A implements Article 12 of the Directive, which deals with the inclusion of a trade mark in a dictionary, encyclopedia or other work of reference so as to give the impression that it is the generic name for the product or servicefor which it is registered. Hoover, for example, should be described as a trade mark for vacuum cleaners - which is exactly what my Bloomsbury Concise English Dictionary does (except that it adopts the American convention of joining the words "trade" and "mark").

The Directive, unhelpfully, prescribes no mechanism for enforcing this right, saying only that the proprietor has the right to request the publisher to put matters right, and that this must be done without delay and certainly in the next edition if the work is a printed on. The Act allows the court, on the proprietor's application, to order compliance, to order erasure or amendment or even destruction, and to grant such other order as the court considers appropriate.

So the proprietor of a vulnerable trade mark has new and valuable protection against genericide. But I realised over the weekend that this is not enough. That dawned on me in the course of solving the Financial Times prize crossword, which tested me with 23 down: "Starts to loot your store of lavatory disinfectant (5)". I had never heard of LYSOL*, but it's the subject of a couple of hundred trade marks around the world owned by Reckitt Benckiser including several EU ones and 3359242 filed last month (313061, from 1909, having died) - the proprietor obviously taking steps to protect itself after 29 March 2019.

I don't like this, though my old friend and fellow cruciverbalist Bob Cumbow of Miller Nash Graham and Dunn LLC, with whom I colaborate on the FT puzzle each weekend, tells me it is fairly common in US puzzles: and he pointed out that the solution to 2 down, "Utter tosh about US estate agent", was also a trade mark: REALTOR ("real" for "utter", "rot" for "tosh", reversed). In fact it belongs to the National Association of Realtors, so it seems to be functioning as a sort of collective or certification mark, so I learnt something new from the exercise, but more importantly it occurred to me that s.99A gives no protection against this important sub-type of genericide. Should it? Or does the law go as far as one might reasonably expect? I should have been writing this when the government (through the agency of the IPO) consulted on the implementation of the new directive. Maybe next time.

*You probably don't need this, but "Starts to ..." is a pretty clear direction to make a word out of the initial letters of what follows.

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