Following the changes that took place within the EU trade mark system as of March 2016 and October 2017, the UK government has today implemented the EU Trade Mark Directive into UK law.
The implementation of the Directive brings about several important changes in UK trade mark law, including:
- The removal of the graphical representation requirement, making it easier for applicants to file certain non-conventional trade marks, such as sound and movement marks, as the UKIPO will now accept sound or video files.
- The existing shape marks objections (which exclude protection for shapes which perform a purely technical function, add substantial value to the goods or result from the nature of the goods themselves) are now extended to exclude protection for marks which consist of any characteristic which is intrinsic to the goods applied for, and not just shapes.
- Where a UK trade mark proprietor brings an action for infringement and also has to bring invalidity proceedings against a corresponding UK trade mark registration owned by the infringer, the trade mark proprietor may now have the invalidity action heard as part of the infringement proceedings, removing the need to bring two separate actions.
- The removal of the own name defence with regard to company names; the defence only now applies to personal names.
For further details of the amendments, see our briefing of 23 October 2018 here.
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.
