Implementing the Trade Marks Directive (EU), the Trade Mark Regulations 2018 (the Regulations) will come into force on 14 January 2019.

What is happening?

The Regulations make amendments to the Trade Marks Act 1994 to ensure the UK’s trade mark registration systems remain effective as technology develops and seeks to ensure consistency in the approach to trade mark protection across Europe.

These changes are already in effect for EU trade marks, as the EU Trade Mark Regulation was amended in 2017. The Regulations therefore bring UK legislation in line with European legislation.

Why does it matter?

The key changes affecting retailers include:

  • definition of “trade mark” is amended to remove the requirement that it must be capable of being represented graphically (sounds, colours and smells may be registrable)
  • counterfeiting related infringing activities are extended to preparatory acts (eg packaging, labels, tags or other authenticity features)
  • counterfeit goods can now be stopped at UK borders, even if they are not intended for an EU market. Previously only goods placed into circulation in the EU could be detained, but this now also applies to goods in transit outside the EU
  • during trade mark infringement proceedings it is now possible for the defendant to request proof of use of the trade mark without bringing a separate revocation action. If no proof is provided the infringement action will be dismissed
  • businesses will no longer be able to rely on the “own name” defence and escape trade mark infringement liability where the trade mark asserted is a word matching their name
  • comparative advertising referencing a registered trade mark is now considered an infringing act if the advertising is contrary to the Business Protection from the Misleading Marketing Regulations 2008.

What action should you take?

Review whether key aspects of your products or services, such as sounds and colours, could be registered as trade marks to give wider protection.

Put in place robust strategies to prevent the transit of counterfeit goods by working with customs officials to seize any potentially infringing goods at the UK border, irrespective of their ultimate destination. This includes any components for the making of the counterfeit goods, including labels, tags and packaging.