Kerly's Law of Trade Marks and Trade Names - Hardcover

An essential source of reference for anyone involved in the protection of trade marks and trade names.When the internet 'South Sea Bubble' was at its peak last year huge sums were being spent marketing new online brands. Central to this activity were the related areas of trade mark and domain name protection. Indeed in recent years brand protection has extended far beyond fast moving consumer goods to encompass online businesses, telecommunications campanies (think of 'Orange') and the computer software and hardware industries: most computer lawyers will at some time have had to apply Microsoft's voluminuous trade mark policies. So the technology and communications lawyer is increasingly having to deal with brand protection issues, long the preserve of specialist trade mark agents and attorneys. In fact the whole area of brand protection has witnessed explosive growth in recent years. This is not just due to the internet: the adoption in 1988 of the (first) harmonising E.C. Trade Marks Directive, its implementation into U.K. law by the Trade Marks Act 1994 and the contemporaneous establishment of the Community Trade Mark System, have made registered trade marks easier to obtain in the United Kingdom and across Europe and they are now more valuable rights (in the sense that proprietors' rights in their marks have been substantially enlarged by the 1993 Act). Kerly is the leading U.K. trade mark text. First published in 1894, the work has gone through 13 editions. The 12th edition was published in 1986 and its distinctive red binding will be familiar to numerous IP lawyers. It has taken the authors six years from the 1994 Act to produce what is in effect a completely new text. The long gestation period has enabled the authors to comment on a rapidly increasing body of U.K. and European decisions and to reflect on the operation of the new trade mark system introduced in 1994. Kerly also covers the law of passing off, a common law remedy which serves to protect those unregistered marks (as well as registered marks) with a 'reputation', and comparative advertising/ 'trade libel'. The competition law aspects of trade marks are also addressed including the difficult area of parallel imports. Most importantly the 1994 Act and the European law surrounding t remain, as the authors are at pains to point out, a law of registered trade marks and not a law against unfair competition. As will be apparent from even a cusory glance at Kerly the new system is highly complex. It remains possible to apply for a U.K. Trade mark at the U.K. Trade Marks Registry, in parallel a Community Trade Mark (CTM) can also be sought via an application to the Office for the Hamonisation of the Internet Market (OHIM) in Alicante, Spain. If granted the proprietor of a CTM will have a Europe-wide right with effect in the U.K. as well as the other Member States. Furthermore, U.K. applicants now have access to the international registration of trade marks via the World Intellectual Property Organisation (WIPO) in Geneva by virtur of the 1996 Madrid Protocol. 'Well known marks' also gained protection for the first independent of any registration in the United Kingdom. Despite the complexity of the new system one thing is clear: it is a system rooted in European law, as the Foreword to Kerly by advocate General Francis Jacobs makes clear, unlike U.K. copyright law (which, apart from certain limited aspects such as databases, moral rights and computer software, currently remains by and large isolated from the continental tradition), U.K. trade mark law is now at its heart Eruopean. Indeed the Acvocate General notes that Kerly can be regarded as a European text in Embryo-where it draws attention to Community law and also the way the English courts have interpreted the 1994 Act and the European trade mark law underpinning it, Kerly will be of interest to practitioners throughout the United Kingdom and the European Union. It is still early days for the European law of trade marks. The Preface to Kerly by the Hon. Sir Robin Jacob points out a number of current ares of debate where the European Court of justice (ECJ) has been called upon to make a ruling. There is the vexed question of the extent to which trade mark law (which now protects shapes and colours) can be used to protect product designs potentially in perpetuity (unlike copyright, design right of registered designs which are all of limited duration). Should the distincive design of the Phillips three headed shaver be protected as a trade mark for example? This is a matter now before the ECJ. Perhaps of most interest to readers of this journal will be Kerly's treatment of trade marks for software, domain names and ''dot com'' and telecoms trade marks (such as 1-800 FLOWERS and www. primebroker.com). All these are converted by Kerly. For example, readers may well be familiar with the 1995 English case Mercury Communications Ltd v. Mercury Interactive (UK) Ltd [1995] F.S.R. 850. This caused something of a stir by holding that 'computer software' as a specification of goods in a trade mark was normally too broad and therefore at risk of being held invalid. It now appears (following the OHIM in trillium TM (2000)) that the U.K. and European views are now diverging. The chapter on ''The Internet'' in Kerly is refreshing both for its common sense approach and brevity. Reams have been written about cybersquatting and each decision under the ICANN Domain Name Dispute Resolution Policy (ICANN policy) seized on as if it was the last word in the matter in issue and some sort of binding precedent. In fact to properly analyse such matters the rest (98 per cent) of Kerly needs to be referred to: It is simply old wine in new bottles. Kerly also is not afraid to comment on the limitations of the ICANN Policy: the panel decisions under the Policy frequently differ in their approach, in the level of legal analysis applied and the procedures used can be criticised on the grounds of fairness, attractive ''rough and ready'' justice though it may well be to successful complainants. Readers coming to trade mark law afresh will not find Kerly an easy read. It assumes considerable familiarity with the subject, as one might expect in such a leading practitioner text. Perhaps when the next edition is prepared a less concise introductory section might be included. This could more fully set trade mark law in its historical and economic context and explore its relationship to related areas such as unfair compeition . This suggestion aside, the new edition of Kerly will be a necessary addition to any serious computer lawyer's library. The authors have done an excellent job in summarising and explaining a field of very wide scope. They have even found time to consider the implication of Human Right Act 1998. As a guide to the legal protection of brands in the real and virtual worlds Kerly remains invaluable. Simon Stokes Tarlo Lyons LondonAs a guide to the legal protection of brands in the real and virtual worlds Kerly remains invaluable. New Law Journal.

Kerly is the standard practitioner text on the UK law of trade marks and trade names. This 13th edition has been completely rewritten as a result of the repeal of the 1938 Trade Mark Act and enactment of the Trade Marks Act 1994. The new legal regime is clearly and comprehensively explained, with extensive footnoting, case examples and a plethora of new materials relevant to the 1994 Act and EU trade mark programme. The standard practitioner text on UK trade mark law, brought up to date with the overhaul of the law in this area; Clear and concise explanation of the law; Reproduces text of all key materials - including the 1994 Act and implementing Rules, the Community Trade Mark Regulation, and the Madrid Protocol; Reproduces all relevant forms.