Due to be implemented by the United Kingdom by 14 January 2019, the EU Trade Marks Directive 2015/2436 aims to further harmonise the national trade mark laws of EU member states. To help prepare for the changes, the UK Intellectual Property Office has published guidance on the changes expected, mainly to the Trade Marks Act 1994 (TMA) and the Trade Marks Rules 2008. These changes have been made through the Trade Marks Regulations 2018 (TMR), and an amended Trade Marks Act has also been made available to illustrate the changes, which can be viewed here. The key changes are summarised below.

1. APPLYING FOR TRADE MARKS

1.1 Removal of requirements for “graphical representation” of trade marks

The removal of this requirement aims to allow trade-marks to be represented in the widest range of digital file formats possible under the current system. Trade mark applications for sounds, multimedia content, animations and holograms can be represented in MP3 and MP4 formats. Such applications will have to be filed online; the UKIPO will not accept paper applications accompanied by USB sticks, CDs or floppy disks!

However, it must be noted that if relying on a UK application/registration as a basis for an International Registration, a graphic representation of the mark sought will still be required. The World Intellectual Property Office (WIPO) which administers international registrations does not currently accept trade mark representations in electronic formats, such as MP3 and MP4.

Section 1 and section 32(2) of the TMA have been amended to accommodate these changes, along with Rule 8(2)(b) of the Trade Marks Rules.

1.2 Objections based on technical function

Under the current regime, a trade mark consisting exclusively of a shape can be refused registration if that shape itself performs a technical function, adds value to the goods or results from the nature of the goods themselves. The Directive has extended this prohibition to also cover characteristics other than shape. It will be possible to refuse a trade mark consisting exclusively of any characteristic which is intrinsic to those goods, which performs a purely technical function, adds value to the goods or results from the nature of the goods.

An example of such a characteristic would be in the case of the doorbell sound being registered for door bells. The sound is an intrinsic characteristic of the doorbell, and thus the application is likely to face objections. Although, it is a broadening of this ground of objection, it should still only affect a relatively small proportion of marks as it relates to the intrinsic nature of the mark itself.

Sections 3(2)(a), (b) and (c) of the TMA have been amended to reflect these changes.

1.3 Earlier rights and Search Reports

The UKIPO will continue to notify applicants of earlier trade-marks it finds to be potentially conflicting with the Applicant’s mark. However, it will cease to notify Applicants of earlier trade-marks which will have lapsed at the date of filing.

This appears to leave a blind spot for Applicants as it is possible for a lapsed trade mark registration to be renewed within the 6 month grace period after expiry or the additional 6 month period allowed for restorations[1] and then be relied upon to challenge an application. To counter this, a further amendment has been made to the relevant provisions. Any use of the Applicant’s trade mark during the period in which the earlier mark had lapsed will not amount to infringement, as long as such use commenced in good faith.

Section 6(3) of the TMA has been repealed, and Rule 37(1A) has been inserted into the Trade Marks Rules 2008.

1.4 Proof of use and Oppositions

The relevant date from which the proof of use period is to be calculated has been amended from the date of publication to the date of filing (of the opposed application) or to the priority date if such a claim exists. This amendment is in line with the amendment to proof of use requirements for EU trademarks (affecting EU trade-marks registered after 23 March 2016).

Section 6A (1A) has been inserted into the TMA to accommodate this.

1.5 Collective marks

There will be a change in the definition of who can own a collective mark, which at present can only be held by ‘associations.’ The definition shall now include “legal persons governed by public law” which will allow a broader range of organisation to hold collective marks. Charter and statute based organisations, co-operatives and other organisations with structures similar to associations may now be able to apply for collective marks.

Individuals remain unable to apply for collective marks.

Section 49 of the TMA has been amended accordingly.

The regulations which govern collective marks must now include sections relating to the conditions of use of the mark. Further, if the collective mark includes any references to a geographical area, the regulations must allow all persons whose goods or services originate from that area and who satisfy all the conditions of the regulations to use the mark.

Furthermore, authorised users of the collective mark will not be able to take action against a potential infringer without consent from the proprietor or an agreement allowing this.

Lastly, an authorised user can now intervene in proceedings brought by the proprietor to obtain compensation for losses suffered by that user.

Schedule 1, paragraph 5(2) of TMA has been amended to accommodate these changes.

2. TRADE MARK DISPUTES

2.1 Goods in transit

Currently, trade mark owners believing that counterfeit goods bearing their trade-marks are being exported outside the EU (via the UK) can request for these goods be detained by customs. Under the current regime, the trade mark owner has to prove that he is the right holder of the trade mark in question for the goods to be detained. However, the Directive has transferred the burden of proof to the exporter; who will have to show that the purported owner of the rights does not in fact own the rights in question. This could be done by showing that the trade mark is not in fact registered in the name of party challenging the exports.

A new section 10A will be inserted into the TMA to accommodate this change.

2.2 Infringements: more options for taking action

The implementation of the Directive has also brought changes to infringement provisions. These have been extended to provide additional options in regards to taking action against those preparing packaging, labels and other materials to be used on counterfeits bearing a registered trade mark. Some of the changes include:

  • The right to take action in relation to a wider range of items used for counterfeiting including tags, security or authenticity features or devices and any other items where copies of a registered trade mark may be affixed without authorisation.
  • The right to take action ‘where the risk exists’ that the items could be used in relation to goods and services. This means action could be taken where there is some uncertainty about the intention of the party producing the packaging, tags etc.
  • The right to take action even when the producer of the items (packaging, tags etc.) is unaware that he is acting without authorisation.

These changes shall be implemented by repealing Section 10(5) and inserting Section 10(3B) to the TMA.

2.3 Trade Marks in dictionaries

A new Section 99(a) to the TMA will allow trade mark owners to request publishers to correct dictionaries which wrongfully identify a trade mark as a generic term. To ensure this can be enforced certain remedies will be available to trade mark owners including the granting of a court order for amendment of the relevant publication.

2.4 Trade Marks registered in the name of an agent or representative

Owners of trade-marks are currently able to challenge the registration of their trade mark in the name of an agent or representative who has acted without authorisation. The Directive has brought changes which allow a trade mark owner to challenge such registrations whether they are based in the UK or abroad. The proprietor of the marks can either prevent the use of the trade mark by the agent/representative or can apply for the rectification of the register to substitute the agent’s name for his own or both.

In order to implement this, a new Section 5(6) and Section 47 (2ZA) will be introduced to the TMA.

2.5 Infringement by registered trade mark

At present, use of a registered trade mark cannot infringe another registered trade mark. As such, a proprietor believing another party is infringing its trade mark cannot succeed in an infringement action until the allegedly infringing mark is officially cancelled.

The new Directive allows the court to consider cancellation issues during the infringement proceedings. Proprietors no longer need to bring separate cancellation actions before or alongside infringement actions. This amendment should reduce costs and the time spent on these types of matters.

Sections 11(1A) and (1B) will be introduced to the TMA to implement this change.

2.6 Defences against infringement

2.6.1 Own name defence

Under newly inserted section 10(4) and amended Section 11 (2) of the TMA, using an existing company’s name (or part of a trade/company name) is now included in the list of infringing acts. In turn, the ‘own name’ defence (against infringement) will now only apply to personal names and not company names. Although, these changes will not apply retrospectively (they come into force on 14 January 2019), it is possible that continuing to use a company name which falls foul of the aforementioned sections after they come into force may constitute trade mark infringement. It remains to be seen how the courts will address disputes arising from this.

2.6.2 Non-use as defence in infringement proceedings

To avoid the need to bring parallel revocation proceedings when faced with an infringement action (where the infringed mark is vulnerable to non-use revocation), a defendant will now be allowed to request the owner of the earlier mark to prove his mark is valid by providing proof of use. Failure to prove such use will result in the infringement action being dismissed.

Section 11(A) will be inserted into the TMA to implement this change.

2.7 Invalidation proceedings – proof of use

Currently, to cancel a trade mark registration on the basis of an earlier mark, the challenger/applicant for cancellation will be required to show that the mark it relies on has been put to genuine use in the 5 year period immediately preceding the application for cancellation. However, under the new regime, it may be possible to request the challenger to prove use for an additional, separate 5 year period.

If the earlier mark has been registered for a relatively long time (at least 10years), the owner of the challenged mark will be able request that the challenger prove use for the 5year period preceding the filing date of the challenged mark (or priority).

By way of an example, if TM1 (challenged mark) was filed in 2007 and is challenged by an earlier mark in 2018 (TM2), under the current regime, the owner of the TM1 can only request that the owner of TM2 show proof use for a 5 year period from 2018 back to 2013. However, under the Directive, the owner of TM1 can also request that proof of use be provided for the 5 years preceding its own application (2007-2002) provided TM2 had been registered for at least 5 years at that point.

This is designed to ensure that holders of earlier registrations do not make minimal use of marks (which would otherwise be invalid) just before commencing cancellation proceedings relying on those marks.

Section 47(2B) will be introduced into the TMA to implement these changes.

3. TRADE MARKS AFTER REGISTRATION

3.1 Licensing

3.1.1 Action under trade mark law

The Directive has brought changes relating to how licensors can challenge licensees who are not compliant with the terms of a license. Licensors could only bring action regarding such breaches under contract law but now it is possible to also bring an action under trade mark law. Section 28 of the TMA will be amended to implement these changes

3.1.2 Action by licensee

At present, it is possible for licensees to bring action against a potential infringer. The Directive brings changes to how this can be done, and it depends on whether the licence is exclusive or non-exclusive. Section 28 will be amended and Section 30 (1A) will be inserted to implement these changes:

  • Exclusive licensees can bring action but must give the trade mark owner the opportunity to do so themselves or give their permission. Should the licensor refuse or fail to give permission within two months, the licensee can proceed.
  • Non-exclusive licensees cannot bring action against a third party except with the permission of the licensor.
  • Licensees can now intervene in proceedings brought by the proprietor to obtain compensation for losses suffered.

3.1.3 Licensing before registration

Under the amended section 27(1) of the TMA, all licensing provisions now apply to trade mark registrations as well as applications.

3.2 Division of trade mark registrations

An amendment to Section 41(1) will be made to provide for the division of trade mark registrations. Under the current regime only trade mark applications can be divided.

A new Rule 26(a) will be implemented which will specify that licences, security interests and disclaimers recorded against an existing registration will apply to each subsequent divisional. However if any if these encumbrances do not apply to a particular divisional, a request can be made for them to be removed. Furthermore, Rule 26(a) will also stipulate that registrations may not be divided if they are subject to an existing dispute regarding ownership.

3.3 Renewal of registrations

Currently, the UKIPO sends out renewal reminders about 4 months before renewal becomes due. This will now change to 6months following the amendment of Rule 34(1).

3.4 Restoration of trade mark registrations

A trade mark owner who does not renew their trade mark registration on time has the opportunity to restore it up to 12 months after the date of expiry[2]. This remains unchanged under the Directive. However, the UKIPO will no longer consider whether it is “just” to restore the trade mark, but whether the failure to renew was “unintentional”. This means the UKIPO will no longer take other trade-marks into account in considering whether it will restore the registration.

CONCLUSION

The deadline for the implementation of the EU Trade Marks Directive 2015/2436 is 14 January 2019 and the changes it brings shall only have effect after this date. A number of these changes will have been anticipated as they have already been implemented into EU Trade Mark Law. Some of the changes brought by the implementation of this Directive should be uncontroversial due partly to being anticipated and also not constituting major changes in UK trade mark law. However, others, such as the removal of the own name defence for companies may prove to be controversial as it is not clear how the courts will address the issue of long standing companies who continue to use names which, after 14 January 2019 fall foul of the new infringement provisions.