October 2, 2018

The Trade Marks Regulations 2018, which come into force on 14 January 2019, implement the Trade Mark Directive (2015/2436/EU) by amending both the Trade Marks Act 1994 and the Trade Mark Rules 2008. The IPO has now published practical Guidance covering the changes.

Some of the key changes covered by the Guidance include:

Applying for a trade mark

Representation of a trade mark: under the new rules, trade mark applicants are no longer required to always provide a graphic (visual) representation of the trade mark and can instead present the mark in a range of electronic formats, such as in an MP3 or MP4 format. Therefore marks that incorporate movement or sound can be more precisely shown. However, if using the UK application as the basis for an international application, WIPO will still require the trade mark to be presented graphically on the application form. The Guidance gives further details on the acceptable electronic formats for an application;

Extending existing objections relating to technical function, etc: the Guidance explains that the prohibition on marks consisting exclusively of shapes that perform a purely technical function, add value to the goods or result from the nature of the goods has now been extended to cover any characteristic that is intrinsic to the goods applied for. The Guidance gives the example of a repetitive high-pitched sound being considered an intrinsic part of a fire alarm and likely to be subject to an objection. According to the Guidance, these changes are likely to apply to only a very small proportion of marks, but if this kind of objection is raised against an application, it may be difficult to overcome; and

Notification of earlier rights in search reports: when examining a trade mark application, the IPO will continue to notify about earlier trade marks that potentially conflict with the application mark, but will no longer notify about marks that have expired. The Guidance warns that that the owners of an expired mark may seek to renew/restore their mark and if they are successful and believe the application mark conflicts with theirs, they may take action. Applicants should therefore also check expired marks when conducting a clearance search.

Objecting, challenging and resolving trade mark disputes

Counterfeit goods in transit: in disputes involving fake or counterfeit goods using a valid trade mark passing through the UK, it will now be up to the person shipping the goods to prove that the trade mark owner has no right to stop them being marketed in the country of destination;

Those preparing to counterfeit: the provisions relating to infringement have been extended slightly, meaning that a trade mark owner may be able to take action:

• against a wider range of items used to prepare for counterfeiting, including tags and security or authenticity features or devices;
• where there is slightly more uncertainty about the intention behind the production of the packaging etc;
• where the person preparing the packaging, etc did so innocently; and
• in relation to services, as well as goods;

Questions of invalidity: the courts can now consider invalidation-related issues during the course of infringement proceedings. For example, the courts can consider the extent to which the other mark has been genuinely used in the five-year period before legal proceedings were started;

Using a name as a trade mark: anyone using a company name that conflicts with someone else’s trade mark may be subject to infringement proceedings and no longer has a defence; and

Non-use defence: A defendant in infringement proceedings can now ask the trade mark owner to show that their mark is valid i.e. that they have been using it, instead of having to issue parallel revocation proceedings based on non-use.

Managing trade marks

Licensing: licensor trade mark owners can now take action against licensees under trade mark law as well as contract law;

Exclusive licensees: exclusive licensees must still give the trade mark owner the opportunity to give permission to take infringement action, but if they refuse, or do not do so within two months, the licensee can take action;

Licensing provisions now relate to application marks: licensing provisions now apply not only to registered trade marks, but also to trade mark applications. The Guidance warns potential licensees and licensors of a mark that has not been registered to be aware that not all applications to register are successful, or if successfully registered may cover a more restricted range of goods or services, and to consider carefully whether this would have an effect on the licence agreement; and

Division of registration: trade mark owners can now divide their registration into several registrations. For example, if a dispute involving a registered mark concerns a limited range of goods and services, the owner can now divide the registration so that the goods or services not subject to dispute are moved to a separate registration. However, owners will not be able to divide if the result is disputed goods and services being included in the original registration and in the newly created one(s). The Guidance explains further about the procedure involved in division.

To read the IPO Guidance in full, click here.