Changes to UK trade mark law

On 14 January 2019 the Trade Mark Regulations 2018 (SI 2018/825) come into force. These Regulations implement the EU’s Trade Mark Directive 2015/2436 and make a number of amendments to the Trade Mark Act 1994. The purpose is to further harmonise trade mark law across the EU.

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Some of the principal changes introduced to the Trade Marks Act 1994 are the following:

  • The requirement that trade marks must be represented graphically is removed. The new test is that marks should be represented on the register so as to allow parties to determine the clear and precise subject matter of the protection. This may enable more types of non-traditional marks to be registered. The UK IPO will allow applications to be filed in a wide range of digital formats (e.g. MP3 and MP4 format files).

  • Additional grounds for refusal of a trade mark application are added. Registration will not be permitted for marks of the following types: designations of origin or geographical indications, traditional terms for wine or traditional specialities and plant varieties.

  • The UK IPO currently notifies trade mark applicants of earlier conflicting marks. After the implementation, it will no longer notify applicants of trade marks that have expired within the last year and which may be a problem for use and/or registration in the event of a late renewal or restoration application being filed. Searches of expired marks should therefore be undertaken prior to applications being filed.

  • In trade mark infringement proceedings, a defence to an infringement action based on non-use has been added so that a proprietor of a registered trade mark is only entitled to prevent use of a later mark if the registered mark is not liable to be revoked for non-use at the date the infringement action is brought. Previously, someone facing proceedings for trade mark infringement based on a registration vulnerable to cancellation for non-use would need to counterclaim for revocation.

    • The owner of a registered trade mark can prevent a third party bringing goods into the UK, where these are in transit and not for free circulation in the UK, where they have arrived from a third country (a customs territory outside the EU) and they bear a sign identical with the registered trade mark or such that it cannot be distinguished in its essential aspects from the registered trade mark. The onus falls on the importer or owner of the goods (in transit through the UK) to prove that the trade mark owner has no right to stop them being marketed in the country of destination rather than the owner of the trade mark having to prove infringing goods are going to be offered for sale in the UK.

  • With regard to the restoration of a lapsed mark, a proprietor will now only need to show that their failure to renew was unintentional. The requirement that the UK IPO should be satisfied that it is just to do so is removed. However, where a mark is restored and a third party has, in good faith, commenced using the identical or a similar mark in the period between expiration of the registered mark and its restoration is published the proprietor of the restored mark may not bring proceedings for trade mark infringement against the third party.

  • Companies lose the ability to rely on the ‘own name’ defence which is where they can avoid liability for infringement where the registered mark matches their name (as long as the name is in accordance with honest practices). Whilst the own name defence remains for natural persons this is no longer a defence for companies against claims of infringement of a third party’s rights.

  • Trade mark owners will be able to require the publishers of a dictionary, encyclopaedia or a similar reference work which gives the impression that their mark constitutes the generic name of the goods or services for which it is registered be amended so as to indicate that it is a registered trade mark.