MAJOR changes will be introduced to the law of trade marks as a result of the Trade Marks Act 1996 which has been signed by the President. It is hoped that it will come into force at the beginning of May.

It will then, for the first time in this country, be possible to register trade marks in respect of services and also to register shapes, sounds, smells and tastes.

The importance of the legislation can be judged by the fact that at the time similar legislation was introduced in the UK in 1994, the then Under Secretary of State of Technology declared that it was expected to save UK industry £60 million in the first year of its coming into force and £30 million in the subsequent year.

This was because it would make it easier for industry and commerce to register trade marks and would provide owners of registered trade marks with wider infringement rights.

The range of trade marks which can be registered under the proposed legislation are broadened to include any sign which can be represented graphically and which is capable of distinguishing goods or services of one undertaking from those of another.

Marks must not be devoid of distinctive character but geographical names are registrable if they have acquired a distinctive character as a result of use. In general, generic marks cannot be registered.

The protection of distinctive get up and packaging will get a major boost from the proposed legislation and the ability to register distinctive shapes and colours (or a combination of these elements) may assist traders to prevent the introduction by competitors of look alike products.

. Services:

Up to now the owner of goodwill in a mark used for services had to rely on the tort of passing off to protect his interest. Under this Bill, a trade mark can be registered to ensure such protection. It is unclear whether retail services and mail order services will be considered "services" for this purpose.

The traditional was that such businesses deal in goods rather than services and, therefore, their owner should seek protection by way of registration in respect of goods. Repair services will be covered as will delivery services, financial services and other branches of the service industry.

. Shapes:

Shapes of goods and their packaging can now potentially be registered. Thus, the famous Coke bottle and the Jif lemon container might in future be trade marks.

However, it is not possible to register a shape if that shape results from the nature of the object itself or if the shape is necessary to give a technical result or if the shape gives substantial value to the goods. (The idea behind this exclusion is that such shapes should be protected under other areas of the law such as copyright, patent or designs legislation.)

. Sounds, Colours, Smells and Tastes:

In the UK, where they have introduced a similar definition of trade mark, ICI, manufacturers of Dulux paints who have for many years used an Old English sheep dog in their advertisements, have applied to register a trade mark in respect of paints and other similar products which they have described as "the sound of a dog barking".

A theme restaurant is attempting to register the interior of the restaurant, and an application has been filed for registration of a gesture (a finger to the nose). An application has been made in the UK to register the Chanel No. 5 scent as a trade mark.

. Classes of goods and services:

Trade marks will continue to be registered in respect of certain classes of goods (and now classes of services). It will now be possible to file multi class applications within one application. Under the previous legislation, the Trade Marks Act 1963, an owner of a mark could only take action to prevent use of an identical mark or a confusingly similar one on identical goods.

Under the new legislation, this right can extend to goods or services similar to those for which the trade mark is registered if there is a likelihood of confusion on the part of the public which includes the likelihood of association of the offending mark with the registered mark.

In addition, where the trade mark has a reputation in the State and the use of the later mark will take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier registered mark, then the owner can prevent its use on any goods or services.

Furthermore, unauthorised oral use of an infringing trade mark will in future infringe a registered trade mark.

. Comparative Advertising:

The Act does not explicitly deal with the contentious area of comparative advertising but provides that a person can use another's trade mark for the purpose of identifying goods or services as those of the proprietor or licensee of the registered trade mark but that such use must in accordance with "honest practices in industrial or commercial matters", a phrase which is not defined.

In the context of advertising, such honest practices might be defined by the Code of Advertising Standards or the Misleading Advertising Regulations.