Following the changes that took place within the EU trade mark system as of March 2016 and October 2017, the UK government is now in the process of implementing the EU Trade Mark Directive 2015.
The UK government has recently published guidelines on the amendments that will be made to UK Trade Marks law as of 14 January 2019 in order to give effect to the Directive. The amendments will bring about several important changes which are highlighted below.
UK Trade Mark applicants will no longer be required to provide a graphical representation. The change will mostly impact sound and movement marks, where the UKIPO will accept sound or video files. However, UK applicants with international interests will need to bear in mind that the World Intellectual Property Office (WIPO) will not accept marks presented in electronic formats. As such, any UK trade mark application that is intended to be used as a basis for an international application under the Madrid Protocol will need to include a graphical representation.
It is important to note that all UK applications will still need to enable others to understand exactly what the mark is and therefore the protection afforded to it. As such, the change is unlikely to help those applicants who may be looking to register more unconventional trade marks, such as smell marks, where the issue of representation of the mark, graphical or otherwise, remains difficult.
Currently, marks which consist exclusively of shapes which perform a purely technical function, add value to the goods or result from the nature of the goods cannot be registered. In January this prohibition will extend to cover marks which consist exclusively of any characteristic which is intrinsic to the goods applied for, and not just shapes. For example, a repetitive high pitched sound would be considered an intrinsic part and a technical function of a fire alarm, and would therefore be objectionable for such goods.
In a dispute over counterfeit goods in transit, a UK trade mark proprietor wishing to detain the counterfeit goods currently has to prove the goods are intended to be sold in the UK. However, the amendments to the law will trigger a shift in the burden of proof, which will in future lie on the person shipping the goods to prove that the trade mark proprietor has no right to prevent them from being marketed in the country of destination.
Additionally, there may now be a wider scope for enforcing trade mark rights against potential infringers preparing packaging in advance of making the counterfeits.
It will be possible to ask a publisher who is displaying a registered trade mark as a generic term in a dictionary or similar publication, to make it clear that the entry is a registered trade mark. If they fail to do so, trade mark proprietors can apply to the court to take action.
Currently, a UK registered trade mark is not infringed by the use of another UK registered trade mark in relation to goods and services for which the latter is registered. In other words, owning a UK trade mark registration can effectively provide a defence to infringement of an earlier mark. In such circumstances, a UK trade mark proprietor who wishes to take action for infringement currently also has to bring separate invalidation proceedings before/alongside infringement action.
As of 14 January 2019, it will no longer be necessary to bring two separate actions, as the court will consider cancellation-related proceedings during the course of infringement proceedings.
Those who have been involved in EU trade mark invalidity proceedings may already be familiar with the two separate five-year periods for proof of use. In EU proceedings based on an earlier right that was more than five years old at the date of application of the later mark, the proprietor of the earlier mark must prove use not only in the five years preceding the date of the invalidity application, but also in the five years preceding the application date of the contested registration.
In the UK, it is currently only necessary for the earlier rights owner to prove use in the five years prior to the filing of the invalidity action if the earlier mark is over five years old at that date, regardless of whether or not it was also more than five years old at the date of application of the contested registration. After implementation of the Directive in January 2019, the UK will introduce the same dual-period system as the EU.
Trade mark proprietors will no longer be able to rely on use of a company name as an ‘own name defence’ in trade mark infringement proceedings; the defence will only apply to personal names and only insofar as the use thereof is in accordance with honest practices in industrial or commercial matters.
The changes largely reflect those that were implemented in the EU in 2016 and 2017, bringing UK trade mark laws in line with those of the EU. It will not have escaped many people’s notice that the UK government is implementing the EU Directive only two months before the date of Brexit. However, we cannot read too much into this, as the UK is simply meeting the deadline for Member States to implement the EU Directive.
The full government guidelines on the implementation can be found here.