Changes are being introduced to UK trade mark law to give effect to the Trade Marks Directive 2015 (EU 2015/2436). The changes largely mirror those previously introduced for EU trade marks (EUTMs). They amend the UK Trade Marks Act 1994 (TMA) and will form part of the body of EU-derived law initially retained in the UK after Brexit under the European Union Withdrawal Act 2018. We set out some key changes to be aware of below.
Requirement for graphical representation removed
Marks will no longer need to be capable of graphical representation. Instead there will be a general requirement that the mark must be able to be represented on the register in a way which clearly and precisely indicates what is claimed. This will make it easier to represent non-traditional marks such as sounds and moving images and may make registration of such marks easier to achieve in some cases. The UK Intellectual Property Office (IPO) has said that it will accept applications presenting the mark in a wide range of electronic formats, including MP3 and MP4. Trade mark owners using the international (or Madrid) system must, however, still file their UK base trade mark with a graphic (visual) representation as the Madrid system still requires this.
More limitations on what can be registered
It has long been the case that marks cannot be registered if they consist exclusively of a shape which results from the nature of the goods themselves (e.g. a plain sphere for a football) or is necessary to obtain a technical result (e.g. a children’s building brick for toys) or which gives substantial value to the goods (e.g. an aesthetically pleasing guitar for guitars). This provision will be expanded to cover characteristics other than shapes. It is not yet known how broadly this will be interpreted. An example of such a non-registrable characteristic often quoted, however, is the sound of a Harley Davidson engine for motorbikes.
Expired marks – don’t let them trip you up
Currently, potentially conflicting expired marks must be taken into account for one year after expiry when the IPO decides whether an application is registrable. This provision will be repealed. As a result the IPO has said that it will no longer notify applicants about potentially conflicting expired marks. It is possible, however, that owners of expired marks may be able to renew or restore their mark and may later challenge the new mark. It is important, therefore, for applicants to include expired marks in their clearance searches prior to applying.
Own name defence no longer available to companies
Use of a person’s own name has long been a defence to trade mark infringement, provided that the use is in accordance with honest practices in industrial or commercial matters. In the past, case law has interpreted this widely to include company names. This defence will now be cut down and will only relate to individuals and not to companies. In practice the defence is fairly limited as the requirement to comply with honest practices means that individuals must use the name in a way that reduces any risk of confusion with the trade marked goods or services.
Goods in transit
A new right to prevent infringing goods being brought into the UK in a suspensive customs procedure is intended to assist in the battle against counterfeits. The change has been made in response to criticism of the current position where the trade mark owner often has to wait until the goods are released onto the market to take action against them – at which point, however, it is often difficult to find them! The new provision allows infringing goods to be seized in transit. The burden of proof will be on the shipper to demonstrate that the brand owner has no protection the country of destination if it wants the goods released.
Changes to the licensee’s right to take action against infringers
At present, unless excluded in the licensing agreement, a non- exclusive licensee may take action against an infringer if the proprietor refuses to do so or fails to do so within two months of being called upon to do so. After 14 January 2019, a non-exclusive licensee will only be able to bring proceedings with the consent of the proprietor even if the licence is silent on the point. So far as exclusive licences are concerned, just as at present, if the licence is silent on the point, the licensee will have a right to call on the proprietor to take action and to do so itself if the proprietor refuses to do so or fails to do so within two months. Trade mark owners and licensees should ensure that these issues are dealt with expressly in the licence agreement (as is usually the case).