UK: The UK's Implementation Of The EU Trade Marks Directive 2015

Last Updated: 13 November 2018
Article by Maya Muchemwa

Due to be implemented by the United Kingdom by 14 January 2019, the EU Trade Marks Directive 2015/2436 aims to further harmonise the national trade mark laws of EU member states. To help prepare for the changes, the UK Intellectual Property Office has published guidance on the changes expected, mainly to the Trade Marks Act 1994 (TMA) and the Trade Marks Rules 2008. These changes have been made through the Trade Marks Regulations 2018 (TMR), and an amended Trade Marks Act has also been made available to illustrate the changes, which can be viewed here. The key changes are summarised below.

1. APPLYING FOR TRADE MARKS

1.1 Removal of requirements for "graphical representation" of trade marks

The removal of this requirement aims to allow trade-marks to be represented in the widest range of digital file formats possible under the current system. Trade mark applications for sounds, multimedia content, animations and holograms can be represented in MP3 and MP4 formats. Such applications will have to be filed online; the UKIPO will not accept paper applications accompanied by USB sticks, CDs or floppy disks!

However, it must be noted that if relying on a UK application/registration as a basis for an International Registration, a graphic representation of the mark sought will still be required. The World Intellectual Property Office (WIPO) which administers international registrations does not currently accept trade mark representations in electronic formats, such as MP3 and MP4.

Section 1 and section 32(2) of the TMA have been amended to accommodate these changes, along with Rule 8(2)(b) of the Trade Marks Rules.

1.2 Objections based on technical function

Under the current regime, a trade mark consisting exclusively of a shape can be refused registration if that shape itself performs a technical function, adds value to the goods or results from the nature of the goods themselves. The Directive has extended this prohibition to also cover characteristics other than shape. It will be possible to refuse a trade mark consisting exclusively of any characteristic which is intrinsic to those goods, which performs a purely technical function, adds value to the goods or results from the nature of the goods.

An example of such a characteristic would be in the case of the doorbell sound being registered for door bells. The sound is an intrinsic characteristic of the doorbell, and thus the application is likely to face objections. Although, it is a broadening of this ground of objection, it should still only affect a relatively small proportion of marks as it relates to the intrinsic nature of the mark itself.

Sections 3(2)(a), (b) and (c) of the TMA have been amended to reflect these changes.

1.3 Earlier rights and Search Reports

The UKIPO will continue to notify applicants of earlier trade-marks it finds to be potentially conflicting with the Applicant's mark. However, it will cease to notify Applicants of earlier trade-marks which will have lapsed at the date of filing.

This appears to leave a blind spot for Applicants as it is possible for a lapsed trade mark registration to be renewed within the 6 month grace period after expiry or the additional 6 month period allowed for restorations1 and then be relied upon to challenge an application. To counter this, a further amendment has been made to the relevant provisions. Any use of the Applicant's trade mark during the period in which the earlier mark had lapsed will not amount to infringement, as long as such use commenced in good faith.

Section 6(3) of the TMA has been repealed, and Rule 37(1A) has been inserted into the Trade Marks Rules 2008.

1.4 Proof of use and Oppositions

The relevant date from which the proof of use period is to be calculated has been amended from the date of publication to the date of filing (of the opposed application) or to the priority date if such a claim exists. This amendment is in line with the amendment to proof of use requirements for EU trademarks (affecting EU trade-marks registered after 23 March 2016).

Section 6A (1A) has been inserted into the TMA to accommodate this.

1.5 Collective marks

There will be a change in the definition of who can own a collective mark, which at present can only be held by 'associations.' The definition shall now include "legal persons governed by public law" which will allow a broader range of organisation to hold collective marks. Charter and statute based organisations, co-operatives and other organisations with structures similar to associations may now be able to apply for collective marks.

Individuals remain unable to apply for collective marks.

Section 49 of the TMA has been amended accordingly.

The regulations which govern collective marks must now include sections relating to the conditions of use of the mark. Further, if the collective mark includes any references to a geographical area, the regulations must allow all persons whose goods or services originate from that area and who satisfy all the conditions of the regulations to use the mark.

Furthermore, authorised users of the collective mark will not be able to take action against a potential infringer without consent from the proprietor or an agreement allowing this.

Lastly, an authorised user can now intervene in proceedings brought by the proprietor to obtain compensation for losses suffered by that user.

Schedule 1, paragraph 5(2) of TMA has been amended to accommodate these changes.

2. TRADE MARK DISPUTES

2.1 Goods in transit

Currently, trade mark owners believing that counterfeit goods bearing their trade-marks are being exported outside the EU (via the UK) can request for these goods be detained by customs. Under the current regime, the trade mark owner has to prove that he is the right holder of the trade mark in question for the goods to be detained. However, the Directive has transferred the burden of proof to the exporter; who will have to show that the purported owner of the rights does not in fact own the rights in question. This could be done by showing that the trade mark is not in fact registered in the name of party challenging the exports.

A new section 10A will be inserted into the TMA to accommodate this change.

2.2 Infringements: more options for taking action

The implementation of the Directive has also brought changes to infringement provisions. These have been extended to provide additional options in regards to taking action against those preparing packaging, labels and other materials to be used on counterfeits bearing a registered trade mark. Some of the changes include:

  • The right to take action in relation to a wider range of items used for counterfeiting including tags, security or authenticity features or devices and any other items where copies of a registered trade mark may be affixed without authorisation.
  • The right to take action 'where the risk exists' that the items could be used in relation to goods and services. This means action could be taken where there is some uncertainty about the intention of the party producing the packaging, tags etc.
  • The right to take action even when the producer of the items (packaging, tags etc.) is unaware that he is acting without authorisation.

These changes shall be implemented by repealing Section 10(5) and inserting Section 10(3B) to the TMA.

2.3 Trade Marks in dictionaries

A new Section 99(a) to the TMA will allow trade mark owners to request publishers to correct dictionaries which wrongfully identify a trade mark as a generic term. To ensure this can be enforced certain remedies will be available to trade mark owners including the granting of a court order for amendment of the relevant publication.

2.4 Trade Marks registered in the name of an agent or representative

Owners of trade-marks are currently able to challenge the registration of their trade mark in the name of an agent or representative who has acted without authorisation. The Directive has brought changes which allow a trade mark owner to challenge such registrations whether they are based in the UK or abroad. The proprietor of the marks can either prevent the use of the trade mark by the agent/representative or can apply for the rectification of the register to substitute the agent's name for his own or both.

In order to implement this, a new Section 5(6) and Section 47 (2ZA) will be introduced to the TMA.

2.5 Infringement by registered trade mark

At present, use of a registered trade mark cannot infringe another registered trade mark. As such, a proprietor believing another party is infringing its trade mark cannot succeed in an infringement action until the allegedly infringing mark is officially cancelled.

The new Directive allows the court to consider cancellation issues during the infringement proceedings. Proprietors no longer need to bring separate cancellation actions before or alongside infringement actions. This amendment should reduce costs and the time spent on these types of matters.

Sections 11(1A) and (1B) will be introduced to the TMA to implement this change.

2.6 Defences against infringement

2.6.1 Own name defence

Under newly inserted section 10(4) and amended Section 11 (2) of the TMA, using an existing company's name (or part of a trade/company name) is now included in the list of infringing acts. In turn, the 'own name' defence (against infringement) will now only apply to personal names and not company names. Although, these changes will not apply retrospectively (they come into force on 14 January 2019), it is possible that continuing to use a company name which falls foul of the aforementioned sections after they come into force may constitute trade mark infringement. It remains to be seen how the courts will address disputes arising from this.

2.6.2 Non-use as defence in infringement proceedings

To avoid the need to bring parallel revocation proceedings when faced with an infringement action (where the infringed mark is vulnerable to non-use revocation), a defendant will now be allowed to request the owner of the earlier mark to prove his mark is valid by providing proof of use. Failure to prove such use will result in the infringement action being dismissed.

Section 11(A) will be inserted into the TMA to implement this change.

2.7 Invalidation proceedings – proof of use

Currently, to cancel a trade mark registration on the basis of an earlier mark, the challenger/applicant for cancellation will be required to show that the mark it relies on has been put to genuine use in the 5 year period immediately preceding the application for cancellation. However, under the new regime, it may be possible to request the challenger to prove use for an additional, separate 5 year period.

If the earlier mark has been registered for a relatively long time (at least 10years), the owner of the challenged mark will be able request that the challenger prove use for the 5year period preceding the filing date of the challenged mark (or priority).

By way of an example, if TM1 (challenged mark) was filed in 2007 and is challenged by an earlier mark in 2018 (TM2), under the current regime, the owner of the TM1 can only request that the owner of TM2 show proof use for a 5 year period from 2018 back to 2013. However, under the Directive, the owner of TM1 can also request that proof of use be provided for the 5 years preceding its own application (2007-2002) provided TM2 had been registered for at least 5 years at that point.

This is designed to ensure that holders of earlier registrations do not make minimal use of marks (which would otherwise be invalid) just before commencing cancellation proceedings relying on those marks.

Section 47(2B) will be introduced into the TMA to implement these changes.

3. TRADE MARKS AFTER REGISTRATION

3.1 Licensing

3.1.1 Action under trade mark law

The Directive has brought changes relating to how licensors can challenge licensees who are not compliant with the terms of a license. Licensors could only bring action regarding such breaches under contract law but now it is possible to also bring an action under trade mark law. Section 28 of the TMA will be amended to implement these changes

3.1.2 Action by licensee

At present, it is possible for licensees to bring action against a potential infringer. The Directive brings changes to how this can be done, and it depends on whether the licence is exclusive or non-exclusive. Section 28 will be amended and Section 30 (1A) will be inserted to implement these changes:

  • Exclusive licensees can bring action but must give the trade mark owner the opportunity to do so themselves or give their permission. Should the licensor refuse or fail to give permission within two months, the licensee can proceed.
  • Non-exclusive licensees cannot bring action against a third party except with the permission of the licensor.
  • Licensees can now intervene in proceedings brought by the proprietor to obtain compensation for losses suffered.

3.1.3 Licensing before registration

Under the amended section 27(1) of the TMA, all licensing provisions now apply to trade mark registrations as well as applications.

3.2 Division of trade mark registrations

An amendment to Section 41(1) will be made to provide for the division of trade mark registrations. Under the current regime only trade mark applications can be divided.

A new Rule 26(a) will be implemented which will specify that licences, security interests and disclaimers recorded against an existing registration will apply to each subsequent divisional. However if any if these encumbrances do not apply to a particular divisional, a request can be made for them to be removed. Furthermore, Rule 26(a) will also stipulate that registrations may not be divided if they are subject to an existing dispute regarding ownership.

3.3 Renewal of registrations

Currently, the UKIPO sends out renewal reminders about 4 months before renewal becomes due. This will now change to 6months following the amendment of Rule 34(1).

3.4 Restoration of trade mark registrations

A trade mark owner who does not renew their trade mark registration on time has the opportunity to restore it up to 12 months after the date of expiry2. This remains unchanged under the Directive. However, the UKIPO will no longer consider whether it is "just" to restore the trade mark, but whether the failure to renew was "unintentional". This means the UKIPO will no longer take other trade-marks into account in considering whether it will restore the registration.

CONCLUSION

The deadline for the implementation of the EU Trade Marks Directive 2015/2436 is 14 January 2019 and the changes it brings shall only have effect after this date. A number of these changes will have been anticipated as they have already been implemented into EU Trade Mark Law. Some of the changes brought by the implementation of this Directive should be uncontroversial due partly to being anticipated and also not constituting major changes in UK trade mark law. However, others, such as the removal of the own name defence for companies may prove to be controversial as it is not clear how the courts will address the issue of long standing companies who continue to use names which, after 14 January 2019 fall foul of the new infringement provisions.

Footnotes

1 Trade Mark holders have a 6month grace period within which to renew their expired trade-marks (with payment of a fee): section 43(3) TMA 1994. Further to this, an additional 6 months is allowed for Trade Mark holders to restore their expired trade-marks with a payment of a fee and providing reasons for the failure to renew within the deadline

2 Please see footnote 1

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Dehns
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Dehns
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions