Changes to UK trade mark law 2019

Ten things to know

Publication February 2019


Introduction

On January 14, 2018 the Trade Marks Regulation 2018 (SI 2018/825) came into force, amending the UK Trade Marks Act 1994 (TMA) and Trade Marks Rules 2008 in order to implement the EU Trade mark Directive 2015/2436.

Below we have set out ten points highlighting the main changes.

Representation of a trade mark – Regulation 3

Changes removed the requirement that trade marks must be capable of being represented graphically. Instead, under Section 3(1)(a) a trade mark must be capable of “being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor”.

This widening of the definition of a trade mark allows the owner to present its trade mark more precisely, particularly those incorporating sound or movement.

Note: A trade mark can now be filed in a variety of digital formats, including

  • Shapes: OBJ, STL and X3D
  • Figurative, pattern, colour: JPEG
  • Sound: MP3
  • Motion, multi-media and hologram: MP4

A mark needs to be represented "in a manner which enables the registrar and the public to determine the clear and precise subject matter of the protection afforded to the proprietor" (the Sieckmann case ((Case C-273/00) criteria).

It is also worth noting that the Madrid system still requires that a trade mark is represented graphically.

Absolute ground for refusal – Regulation 4

The list of those things which are excluded from registration has been extended.

Excluded from registration are signs consisting exclusively of a shape, “or another characteristic” if the shape or other characteristic

  • Arises from the nature of the goods.
  • Is necessary to obtain a technical result.
  • Gives substantial value to goods.

This is now expanded to include all types of signs.

Note: Consider a proposed mark more broadly, especially if it exclusively comprises a shape or another characteristic, when assessing suitability for registration.

UK IPO search report/notifications of earlier marks – Regulation 7

The UK IPO will continue to notify an owner of earlier rights on the register of potentially conflicting applications. However, changes have been made so the UK IPO will no longer notify expired earlier rights.

Note

  • Renew trade marks promptly to avoid the risk of missing a notification.
  • An owner may restore its expired mark and bring a claim against a potentially conflicting application. If however that application has been filed in good faith, the applicant will not be liable for infringement for the period beginning with the date the original trade mark expired and date on which it was restored.
  • Take note of recently expired marks when conducting clearance searches.

Proof of use in proceedings – Regulations 8, 12, 13, 23

Opposition: previously, an opponent basing an opposition on an earlier trade mark needed to prove genuine use of the earlier mark if that earlier mark was registered before the start of the period of five years ending with the date of publication of the mark being opposed. Now, the five-year period will end on the filing date of the opposed mark or, if applicable, its priority date.

Invalidity: in invalidity proceedings, where an earlier mark older than five years from the date of registration is cited, the relevant five-year period is similarly affected. Not only does the applicant for invalidity need to show use of its mark in the five year period immediately before the date of the invalidity action, it may also be required to show use of the mark in the five-year period ending on the filing date of the challenged mark or, if applicable, its priority date.

Infringement: a defendant to infringement proceedings can raise non-use of the claimant's mark as a defence, rather than having to launch separate revocation proceedings. To overcome such a defence, the owner will have to show genuine use of the mark in the five-year period ending on the date the action was brought.

Note

  • In relation to all the five-year periods mentioned here, the requirement to show genuine use of the mark will be waived if there are proper and excusable reasons for non-use.
  • This is to ensure that an owner has not unfairly made some minimal use of an old mark prior to the invalidation action, solely to preserve rights which would otherwise be invalid.
  • There is no need to take separate invalidation proceedings before/alongside an infringement action. The courts can now consider invalidation-related issues during the course of infringement proceedings

Collective trade marks – Regulations 24, 33

Ownership: Typically, collective trade marks are owned by trade associations and are used by their members to indicate that they belong to that organisation. The definition of who can hold a collective trade mark has been extended to include ‘legal persons governed by public law’.

Regulations: The provisions that must be included in the regulations governing use of the collective mark have been extended,

If the collective trade mark includes any reference to a geographical area, the regulations must allow for any persons, organisations, whose goods or services originate in that specific geographical area to become an authorised user.

Authorised users: authorised users are unable to take legal action for infringement unless they have the permission of the owner of the collective trade mark or there is an agreement allowing this.

Note

  • These changes do not affect private individual who are still unable to apply for a collective trade mark.
  • An authorised user must meet all the conditions of the regulations to become an authorised user in a specific geographical area.
  • An authorised user can now also intervene in infringement  proceedings to obtain compensation for the loss it has suffered, though carry out a cost/benefit analysis first.

Counterfeiting – Regulations 10, 11

Infringing preparatory acts: a new right prevents unauthorised parties from placing a similar mark or any sign on any packaging, tags, labels, security or authenticity features or, on any other items which can used in relation to goods and services. Such use will constitute trade mark infringement.

Goods in transit: in a claim brought against a person or company believed to be shipping fake or counterfeit goods which are passing through the UK, the burden of proof now lies with the person shipping the goods to prove that there is no right to stop the goods being marketed in the country of destination.

Note: Until this change in the law, it was necessary for a trade mark owner to prove that the goods would have been put on sale in the UK.

Defences to Infringement – Regulations 10, 11, 12 

Use of own name: it is no longer a defence to trade mark infringement to show that the defendant was merely using its own company name. The defence against infringement now only applies if a personal name is being used.

Non-use defence: a defendant to infringement proceedings is able to raise non-use of the claimant's mark as a defence, rather than having to launch separate revocation proceedings (see 4. above).

"Infringing" use if a similar earlier mark was "expired": if a trade mark is registered and used and subsequently an expired mark is restored , its owner may claim infringement, but if the later mark was registered in good faith, there may be a defence against such a claim (see 2. above).

Note: It is possible that, although a company name may have been used legitimately before January 14, 2019, unless it is also a personal name, the company may be liable for infringement afterwards.

Generic terms – Regulation 12

If a registered trade mark is included in a dictionary, the owner can ask the publisher to make it clear that the entry is a registered trade mark and not identified as a generic term

Note: If a publisher does not comply with the request promptly or, in the case of printed copies, does not do so in the next edition, it is possible to apply to court for action to be taken. The court might order the publisher to correct the entry, amend the way the trade mark is reproduced, or to destroy copies of the publication. The court has discretion over other remedies also.

Marks registered by agent or representative without the owner’s consent – Regulations 5, 23

This change relates to the remedies available in a situation where a trade mark has been applied for or registered in the name of an agent or representative without seeking permission from the owner.

If the trade mark is an application, it can be opposed. If registered, then the owner can apply to the UK IPO to rectify the register or to invalidate the registration.

Note

  • The options have changed slightly and now apply to any owner of a trade mark, whether based in the UK or abroad.
  • Under section 60 of the Trade Mark Act, unauthorised registration by an agent or representative is a ground of opposition, invalidity and rectification, and the owner can restrain the use of a mark registered in such circumstances.

Licensing – Regulation 16, 17, 25

The changes seek to harmonise national laws in line with licensing provisions for European trade marks.

Now a licensee can only bring an infringement claim with the owner’s consent. If a licensee has an exclusive licence, it may bring a claim if the owner has failed to do so within an appropriate period after being served with a formal notice.

Under the new provisions, the licensee also has the right to intervene in infringement proceedings to seek compensation for damage it has suffered.

Note

  • This new provision makes it easier to take legal action.
  • Licencing provisions in trade mark law now apply to applications as well as registered trade marks.


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