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Good news for brand owners as trade mark law is updated
07 Feb 2019

There was a time when ‘Hoovering’ was a key household chore. In fact, the job in hand was the vacuuming which may or may not have been carried out with a product manufactured by Hoover. The question as to whether this was a benefit, or not, to the Hoover brand is open to some debate but with the need to protect the value of a brand never more pressing than it is in today’s digital world, recently introduced legislation should be welcomed by owners of registered trade marks.

David Preece, a Partner in FBC Manby Bowdler’s Corporate Team, explains more.

The term ‘Hoovering’ is, despite the relative decline of the brand itself, still in use today. In the twenty-first century we rarely, if ever, reference needing to get the ‘Dysoning’ done! Hoover is, therefore, the perfect example of what has become known as a “generic trade mark” – simply, its popularity and domination in the market, for many years at least, made it synonymous with the act of vacuuming, whether it was one of its own products being used or not.

The same could be said, to a greater or lesser degree, of Aspirin, Sellotape, Velcro and Speedos. Nowadays, perhaps the most common example of ‘genericide’ is when we carry out a search for information online: we ‘Google it’ regardless of whether that’s the search engine that we actually use.

Brand owners have, however, now been handed new powers to protect their IP.

Thanks to an amendment to the EU Trade Mark Directive, which is implemented here in the UK through the Trade Marks Act 1994, any registered trade mark which appears in the dictionary must be clearly stated as a protected term, otherwise the brand owner is eligible to take the publisher to court.

Moreover, a brand owner’s power against a counterfeiter should be bolstered by removing their responsibility to prove that their trade marked product or service has been infringed, and instead focusing on the suppliers of those potentially illegal goods, who will now need to prove they hold appropriate rights to supply those goods or services.

Overall, what these moves are intended to achieve is greater support for innovation and economic growth in the UK as brand owners strive to protect the distinctiveness of their product or service. It is also intended as a means of minimising differences between the trade mark frameworks across Europe, whatever happens once the UK exits later this year.

Any brand owner with a registered trade mark in place who believes that their brand may have been compromised in direct contravention of this new law; or those for whom seeking registered trade mark status for their product or service is something they’ve been considering, the Corporate Team at FBC Manby Bowdler offers a wealth of experience across all areas of intellectual property, registered trade marks, issues of copyright and also design rights.

David can be contacted on 01952 208421 or via email

Meet David Preece