From 14 January 2019 the long-awaited Trade Mark Directive (2015/2436) will take effect in the UK, reflecting the UK’s continued effort to enhance harmonisation of trade mark law across the EU.

So, what do UK trade mark Applicant’s need to know?

Key Changes:

…. In Respect of UK Trade Mark Applications

  1. When filing a UK TM application, you are now able to present your mark in a wider range of electronic formats, such as in an MP3 or MP4 format. This defines protection for sound, moving images, hologram or a multimedia trade marks much more precisely than we previously possible. (Note– this change does not apply to UK designations filed through the International Madrid system).
  2. Marks which consist exclusively of shapes cannot be registered if the shape itself performs a purely technical function, adds value to the goods or results from the nature of the goods. These provisions have now been extended to cover not just shapes, but any characteristic which is intrinsic to the goods applied for.
  3. The UK IPO will no longer notify Applicants about similar expired third party trade mark registrations during the examination stage (Note – it is possible for expired UK registrations to be restored or renewed, therefore, they could still pose a risk to the registration of your mark).
  4. In relation to opposition proceedings, the five-year period where a mark used as basis for opposition can be challenged on the basis of non- use, now ends from the date your application was made or on its priority date as opposed to the date of publication of the application. This will apply to proceedings started on or after 14 January 2019, but not to those started before then.
  5. As of 14 January 2019, a wider range of organisations will be able to apply for a collective trade mark in the UK. Furthermore, if you are an authorised user (of a collective mark), you will not be able to take legal action against infringement unless you have the permission of the proprietor of the collective trade mark, or there is an agreement in place allowing you to do so.

… In Respect of Trade Mark Disputes

  1. In the event that you think fake or counterfeit goods under your mark are passing through the UK enroute to countries outside the customs territory of the EU, you can request that the customs authorities detain them. In any such dispute, it will now be up to the person shipping the goods to prove that you have no right to stop them being marketed in the destination country. (it is no longer required that the trade mark owner prove that the goods coming from the outside of the EU were intended to be put on sale in the UK). The burden of proof has now shifted to the importer.
  2. Further to the above, a more extensive range of (counterfeit) activities will be treated as infringement. This should make it more difficult for parties that contribute to counterfeiting to avoid prosecution.
  3. As the registered trade mark owner, you can now take action against publishers who have incorrectly identified your trade mark as a generic term in a dictionary etc. You may now ask the publisher to make it clear that the mark is registered, and if they fail to do so you can apply to the court to order that the publisher correct the entry or amend the entry, destroy copies of the publication, or order other remedies, as appropriate.
  4. If someone acting as your trade mark agent or representative has applied for or registered your trade mark without your permission there are now provisions in place for you to rectify the ownership on the Register as well as to invalidate the registration.
  5. Prior to 14 January 2019, it was not possible to bring infringement proceedings against another registered mark unless you had firstly invalidated it. Now, the courts will consider invalidation-related issues during the course of infringement proceedings. Importantly, the courts will take into consideration the length of time you knew that the other was being genuinely used before taking legal action.
  6. Some changes have been made to the infringement defences -

    a. Own-name defence: the use of a trade mark as (or part of) a company name may now be found to be an infringing act. This defence now only applies if you are using your own personal name.

    b. Non-use defence: As part of your defence during proceedings, you can now ask the owners of the registered mark to show that their mark is valid i.e. that they have been using it. This is easier than commencing parallel revocation proceedings based upon a claim of non-use.

    c. If you applied to registered/started to use a mark that was similar/identical to an earlier registered once that mark had expired and then the owner of the earlier mark renews/restores it, they may now claim you are infringing this registration. Under certain circumstances, you may have a defence against such a claim.

  7. In relation to invalidation proceedings, new amendments mean that the claimant may have to demonstrate more substantial evidence that their earlier rights are valid.

    … In Respect of Managing Trade Mark Rights

  8. If you licence use of your trade mark, it is now possible for you (as the trade mark owner) to take legal action under UK trade mark law, (as opposed to contract law) against the licensee if they fail to observe correctly the provisions in the licence which deal with how long the agreement lasts, what goods/services the licence covers, geographic area the mark can be used and quality etc.
  9. Where previously, you were able to divide your application, it is now possible to divide registrations in the event of a dispute.
  10. From 14 January 2019, the UK IPO will send out renewal reminders about 6 months before the renewal fee is due to be paid and your registration expires. Reminders were previously sent out about 4 months before the due date.
  11. If you fail to renew your trade mark registration and you wish to ‘restore’ it, the UK IPO will now assess whether the registration should be restored based on whether the failure to renew was ‘unintentional’ (previously the test had been whether it was ‘just’ to renew your mark). The IPO will no longer have to consider other marks when deciding whether to restore your mark.