From 14 January 2019 the long-awaited Trade Mark Directive (2015/2436) will take effect in the UK, reflecting the UK's continued effort to enhance harmonisation of trade mark law across the EU.
So, what do UK trade mark Applicant's need to know?
Key Changes:
.... In Respect of UK Trade Mark Applications
- When filing a UK TM application, you are now able to
present your mark in a wider range of electronic formats, such as
in an MP3 or MP4 format. This defines protection for sound, moving
images, hologram or a multimedia trade marks much more precisely
than we previously possible. (Note– this change does not
apply to UK designations filed through the International Madrid
system).
- Marks which consist exclusively of shapes cannot be
registered if the shape itself performs a purely technical
function, adds value to the goods or results from the nature of the
goods. These provisions have now been extended to cover not just
shapes, but any characteristic which is intrinsic to the goods
applied for.
- The UK IPO will no longer notify Applicants about similar
expired third party trade mark registrations during the examination
stage (Note – it is possible for expired UK registrations to
be restored or renewed, therefore, they could still pose a risk to
the registration of your mark).
- In relation to opposition proceedings, the five-year period
where a mark used as basis for opposition can be challenged on the
basis of non- use, now ends from the date your application was made
or on its priority date as opposed to the date of publication of
the application. This will apply to proceedings started on or after
14 January 2019, but not to those started before then.
- As of 14 January 2019, a wider range of organisations will be
able to apply for a collective trade mark in the UK. Furthermore,
if you are an authorised user (of a collective mark), you will not
be able to take legal action against infringement unless you have
the permission of the proprietor of the collective trade mark, or
there is an agreement in place allowing you to do so.
... In Respect of Trade Mark Disputes
- In the event that you think fake or counterfeit goods under
your mark are passing through the UK enroute to countries outside
the customs territory of the EU, you can request that the customs
authorities detain them. In any such dispute, it will now be up to
the person shipping the goods to prove that you have no right to
stop them being marketed in the destination country. (it is no
longer required that the trade mark owner prove that the goods
coming from the outside of the EU were intended to be put on sale
in the UK). The burden of proof has now shifted to the
importer.
- Further to the above, a more extensive range of (counterfeit)
activities will be treated as infringement. This should make it
more difficult for parties that contribute to counterfeiting to
avoid prosecution.
- As the registered trade mark owner, you can now take action
against publishers who have incorrectly identified your trade mark
as a generic term in a dictionary etc. You may now ask the
publisher to make it clear that the mark is registered, and if they
fail to do so you can apply to the court to order that the
publisher correct the entry or amend the entry, destroy copies of
the publication, or order other remedies, as appropriate.
- If someone acting as your trade mark agent or representative
has applied for or registered your trade mark without your
permission there are now provisions in place for you to rectify the
ownership on the Register as well as to invalidate the
registration.
- Prior to 14 January 2019, it was not possible to bring
infringement proceedings against another registered mark unless you
had firstly invalidated it. Now, the courts will consider
invalidation-related issues during the course of
infringement proceedings. Importantly, the courts will take
into consideration the length of time you knew that the other was
being genuinely used before taking legal action.
- Some changes have been made to the infringement defences
-
a. Own-name defence: the use of a trade mark as (or part of) a company name may now be found to be an infringing act. This defence now only applies if you are using your own personal name.
b. Non-use defence: As part of your defence during proceedings, you can now ask the owners of the registered mark to show that their mark is valid i.e. that they have been using it. This is easier than commencing parallel revocation proceedings based upon a claim of non-use.
c. If you applied to registered/started to use a mark that was similar/identical to an earlier registered once that mark had expired and then the owner of the earlier mark renews/restores it, they may now claim you are infringing this registration. Under certain circumstances, you may have a defence against such a claim.
- In relation to invalidation proceedings, new amendments mean
that the claimant may have to demonstrate more substantial evidence
that their earlier rights are valid.
... In Respect of Managing Trade Mark Rights
- If you licence use of your trade mark, it is now possible for
you (as the trade mark owner) to take legal action under UK trade
mark law, (as opposed to contract law) against the licensee if they
fail to observe correctly the provisions in the licence which deal
with how long the agreement lasts, what goods/services the licence
covers, geographic area the mark can be used and quality etc.
- Where previously, you were able to divide your application, it
is now possible to divide registrations in the event of a
dispute.
- From 14 January 2019, the UK IPO will send out renewal
reminders about 6 months before the renewal fee is due to be paid
and your registration expires. Reminders were previously sent out
about 4 months before the due date.
- If you fail to renew your trade mark registration and you wish to 'restore' it, the UK IPO will now assess whether the registration should be restored based on whether the failure to renew was 'unintentional' (previously the test had been whether it was 'just' to renew your mark). The IPO will no longer have to consider other marks when deciding whether to restore your mark.
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.