The Trade Mark Directive (EU 2015/2436) came into force in the UK on 14 January 2019, in the form of the Trade Mark Regulations 2018, bringing about a number of key changes to UK trade mark law. The UKIPO has also published guidance on the practical effect of the Regulation (available here). Below we set out what we think are the top 8 changes to be aware of.
Own name defence
The own name defence has been limited so that it only applies if you are using your own personal name and therefore no longer applies to use of a company name or a trading name or style.
You will no longer be required to provide a graphic, visual representation of your trade mark as part of a trade mark filing. The requirement under the new Directive is that marks be represented in a clear and precise manner. This means non-standard marks, such as sounds, colours and smells, can be represented more accurately using new technology.
Absolute objections to registration
Under the current legislation, marks which consist exclusively of shapes cannot be registered if the shape itself adds value to the goods, results from the nature of the goods or performs a purely technical function. This absolute objection to registration has now been extended to any characteristic which is intrinsic to the shapes. The IPO gives the example of a repetitive high pitched sound, which would be considered to be an intrinsic part of a fire alarm and therefore would not be registrable.
Goods in transit
You can now request that the customs authority detain goods which you believe are fake or counterfeit which are passing through the UK en route to countries outside the EU. Previously, it was only possible to stop goods where you could show that the goods were going to be put on sale in the UK.
UKIPO search reports
The UKIPO will no longer include expired trade marks in its search reports. This could lead to problems if the owner of the expired mark later applies to renew/restore the mark. If you are currently relying only on UKIPO search reports for clearance purposes, be aware that it will not include such expired marks and consider getting a report which does include these marks.
The right to take enforcement action against counterfeiters has been extended to allow you to take action, in certain cases, against counterfeiters’ actions to prepare counterfeit goods for sale. For example, you can now take action against acts such as preparing tags and packaging for sale of products or services even where the person carrying out such acts was unaware this was done without your consent.
Calculating non-use periods
You can now require a trade mark owner taking infringement action against you to prove that their mark has been used in the last 5 years. Previously, you would have had to commence a separate revocation action. The date from which a non-use period is calculated has also been changed from the date of publication, to the date of filing (or priority if applicable).
The new provisions make it easier for a trade mark owner to take action against a licensee who is not complying with the terms of the licence. You can now take action under trade mark law, as well as under contract law.