The UKIPO has issued a consultation paper on the implementation of the EU Trade Mark Directive 2015 (the “Directive”), which is required to be implemented into UK law by 14 January 2019. The government is seeking the views of interested parties on the draft SI (The Trade Marks Regulations 2018) that will enact the changes required to UK trade marks law in order to implement the Directive. It also invites comments on the likely costs and benefits associated with the changes. The consultation will run for 8 weeks until 16 April. The UKIPO says that, once the consultation period has closed, it will issue a response document in due course and business guidance will be issued before 14 January 2019. It cannot say however when the final SI will be laid in Parliament, in view of the pressures on Parliamentary time as the UK nears the day of withdrawal from the EU.

The Directive aims to harmonise the conditions for obtaining and continuing to hold a registered trade mark so that they are, in the main, identical in Member States. The UKIPO says that its policy is to limit the amendments to UK trade mark law to those which are necessary but nevertheless there are a number of substantive changes to UK trade marks law being proposed.

The most significant is the removal of the requirement for ‘graphical representation’. 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. The government is seeking input on how this might change the demand for unusual mark types and which formats would be most useful.

Another important change is the introduction of non-use of a mark as a defence in infringement proceedings. Currently, the trade mark owner’s use (or lack of it) can only be challenged by commencing separate non-use proceedings or by counter-claiming for invalidity.

Also key is the new provision on goods in transit, which provides for potentially counterfeit goods to be detained by customs where they are passing through the UK en route to third countries. This has removed the need for trade mark owners to prove that potentially counterfeit goods from outside the EU will be placed on sale in the country where they have been detained. The government is seeking views on whether the new section should apply to goods originating outside the EU (rather than outside the EEA).