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

Last Updated: 30 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. 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.

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.

1.3 Earlier rights and Search Reports

The UKIPO will continue to notify applicants of earlier trademarks 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 restorations 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.

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.

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.

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.

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 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.

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
  • The right to take action 'where the risk exists' that the items could be used in relation to goods and services.
  • The right to take action even when the producer of the items (packaging, tags etc.) is unaware that he is acting without authorisation.

2.3 Trade Marks in dictionaries

A new Section will allow trade mark owners to request publishers to correct dictionaries which wrongfully identify a trade mark as a generic term.

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.

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.

Defences against infringement

2.6.1 Own name defence

Using an existing company's 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, 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.

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.

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 10 years), the owner of the challenged mark will be able request that the challenger prove use for the 5 year period preceding the filing date of the challenged mark (or priority).

3. TRADE MARKS AFTER REGISTRATION

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.

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.

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.

3.1.3 Licensing before registration

All licensing provisions now apply to trade mark registrations as well as applications.

3.2 Division of trade mark registrations

A new rule 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.

3.3 Renewal of registrations

Currently, the UKIPO sends renewal reminders about 4 months before renewal becomes due. This will change to 6 months 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 expiry. 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 trademarks into account in considering whether it will restore the registration.

Conclusion

The deadline for the implementation of the EU Trade Marks Directive 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 and will be uncontroversial. 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.

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.

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