Today, World IP Day, we are looking at registered trade mark protection and some recent developments in the law of trade marks in Europe and the UK and future developments.
Trade marks are signs which are used by traders to differentiate their goods and services from those of other traders and they can include business names, product names and slogans. A company’s trade marks can be the result of years of research, inspiration and design ingenuity and it is therefore important for a company to protect its trade marks. Whilst trade marks in the UK can be protected by unregistered rights, registered trade mark protection provides the highest level of protection for a company’s trade marks.
The first step in the process of registering a trade mark, either at UK or European level, involves an examination of the trade mark by the relevant trade mark registry on what are called absolute grounds. In order to register a trade mark, it must be a sign capable of being represented graphically, must have distinctive character and it must not fall foul of any of the other absolute grounds. For more information on the requirement for distinctive character, please see our webinar entitled “Trade Marks – registering a colour and assessing distinctiveness”.
The absolute grounds set out the kinds of trade marks which cannot be accepted for registration and they generally relate to the qualities or characteristics of trade marks. One of the absolute grounds preventing registration is that the mark is descriptive of the goods and/or services applied for in the application. In the recent case of Continental Bulldog Club v OHIM, the EU General Court upheld a decision of the OHIM Board of Appeal rejecting an application to register the word “CONTINENTAL” as a European Community trade mark for dogs and for services of dog breeding, holding that it was descriptive of the breed of dog called the continental bulldog. The applicant had argued that the continental bulldog was not yet an officially recognised breed and that it could take years for such recognition to be granted. However, the court held that the breed has been recognised in Switzerland since 2004 and members of the relevant public would have access to Swiss websites carrying that information. The members of the relevant public would therefore view the trade mark as descriptive of the goods and services and not as a sign indicating the origin of the goods and services.
Once a trade mark registration is obtained, the trade mark must be used in respect of all of the goods and/or services for which it is registered to ensure continued validity of the trade mark registration. If a registered trade mark has not been used in relation to the goods and/or services for which it is registered for a period of time, it could be challenged for non-use.
Looking to future developments of trade mark law, the European Commission has proposed reforms to EU trade mark law, involving amendments of the Community trade mark and harmonised national trade mark law in Europe. The proposed changes do not represent a major overhaul of the existing system but there are changes which will impact brand owners. Most of the proposals are designed to iron out inconsistencies between the treatment of European Community trade marks and national trade marks, and the practices and procedures of the Office for Harmonisation in the Internal Market (OHIM) and national trade mark offices. The most significant of these would remove the requirement to represent a trade mark graphically and would make counterfeit goods that are in transit through the EU subject to infringement proceedings regardless of whether they will be marketed within the EU.