22 April 2006

New Community Trade Mark and Enforcement Regulations to come into Effect on 29 April 2006

Two new statutory instruments will require practitioners' attention from 29 April 2006:
(1) The Community Trade Mark Regulations 2006 (SI: 2006 No. 1027); and
(2) The Intellectual Property (Enforcement, etc.) Regulations 2006 (SI 2006 No. 1028).

The first of these replace the Community Trade Mark Regulations 1996 (SI 1996/1908) and will require me to update my article on the Community trade mark pretty soon. The new regulations are a bit longer. The main changes so far as I can see are that they accommodate the EC's accession to the Madrid Protocol and the designation of the Manchester, Leeds and other chancery county courts as Community trade mark courts in reg 12 (2) ("ye gods" I hear many metropolitans - and not just metropolitans - sigh).

The enforcmement regulations are much more significant in that they implement the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004)). The big practical changes for us practitioners are:
(1) Reg 3 which makes the following provisions for wilful infringement:
"Where in an action for infringement of an intellectual property right the defendant knew, or had reasonable grounds to know, that he engaged in infringing activity, the damages awarded to the claimant shall be appropriate to the actual prejudice he suffered as a result of the infringement"';
(2) Sched 1 which makes extensive changes to the Registered Designs Act 1949, particularly with regard to remedies; and
(3) Sched 2 which makes various changes to the Patents, Copyright, Designs and Patents and Trade Marks Acts.
Many of the changes affect Scotland which my old china Richard Aird will no doubt gladly discuss ........ for a fee (he is Scottish after all).

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