What could be the very last European Council directive to be implemented into UK statute law comes into force on Monday, 14 January. Trade mark proprietors might consider themselves fortunate at this development because it enhances their rights.
The corpus of UK trade marks legislation includes the Trade Marks Act 1994, the Trade Marks Rules 2008 and the Community Trade Mark Regulations 2006. Come 14 January, the Trade Marks Regulations 2018 (“the Regulations”) will import into UK law those remaining provisions of Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Recast), which have not yet been brought in.
In this update, I consider some of the central changes effected by the Regulations to the Trade Marks Act 1994 only. Those changes should please IP general counsel managing trade mark portfolios. That is because UK trade mark protection is being modernised to keep pace with ever-advancing technological developments.
What Can Be a Trade Mark
The very notion of a trade mark is being expanded. Gone is the requirement that a sign must be capable of being represented graphically. Up to now, a trade mark could already comprise words, designs, letters, numerals or the shape of goods or their packaging. From January 14, colours and sounds can also qualify for protection.
Infringement: Attachment Liability and Use of an Infringing Sign as a Company Name
The Regulations expand the scope of infringing activities.
Previously under section 10(5) of the Trade Marks Act 1994, attaching a registered trade mark to material intended to be used for labelling or packaging goods, to be used as a business paper, or used for advertising goods or services, could mean liability on the attacher for any subsequent infringing use of the material. The proprietor had to show that the attacher of the registered trade mark knew or should have realised that its proprietor had not authorised the attachment.
But following implementation of these Regulations, anything to which the infringing mark can be attached, together with any dealing in or with it, can render the attacher liable for infringement. To fix liability in these circumstances, the proprietor will only need to show a risk that the attachment of the registered mark is going to facilitate an infringing use. Out goes the old section 10(5), and in comes the broader level of attacher liability:
(3B) Where the risk exists that the packaging, labels, tags, security or authenticity features or devices, or any other means to which the trade mark is affixed could be used to in relation to goods or services and that use would constitute an infringement of the rights of the proprietor of the trade mark, a person infringes a registered trade mark if the person carries out in the course of trade any of the following acts—
(a) affixing a sign identical with, or similar to, the trade mark on packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark may be affixed; or
(b) offering or placing on the market, or stocking for those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark is affixed. (emphases added.)
European law has also moved on in sanctioning using a sign to take unfair advantage of a registered trade mark without due cause. Under the Regulations, use of a sign as a trade or company name to take unfair advantage without due cause becomes infringing use. Equally, the misleading use of a sign in comparative advertising to that end becomes sanctioned as infringing use.
On the procedural front, proprietors who license their registered trade marks can now bring trade mark infringement proceedings against licensees who commit one or more of the specified breaches of their licence agreements. This provision will potentially save licensors the need to prove the terms or possibly the provenance of the licence in a breach of contract action.
Higher Bars for Proprietors
Whilst enhancing proprietors’ rights, the Regulations also make it easier to defend infringement claims by asserting the invalidity of the registration for non-use.
Under European law, the non-use of a registered trade mark over a period of five years justifies the mark’s invalidity if the non-use cannot be justified by a proper reason. Up to now, a defendant to an infringement claim needed to counterclaim for an invalidity declaration. However from 14 January, the defendant can effectively incorporate the invalidity counterclaim into its defence.
Where the proprietor is suing for infringing for a registered trade mark more than five years after registering it, the defendant can demand evidence of its genuine use in the United Kingdon in relation to the goods and services for which it is registered.
Finally, and less of a burden, is the provision regarding a proprietor who refuses or ignores its exclusive licensee’s request to bring proceedings against a third party infringer. That proprietor will become powerless to prevent the exclusive licensee bringing the proceedings as if it were the proprietor.
In the continuing maelstrom that is the UK’s exit from the European Union, registered trade mark proprietors can take some degree of comfort from the fact that the enhanced European Union protections in the Regulations are being brought into UK law, at least for the foreseeable future.