New EU Trade Mark Directive

On 14 January 2019 both the Trade Marks Act 1994 and the Trade Mark Rules 2008 will be amended as a result of the UK implementing the EU Trade Mark Directive No. 2015/2436.

The Directive is aimed at harmonizing the trade mark laws of EU Member States, who have until 14 January 2019 to transpose its provisions into their national laws. The timing is slightly odd considering that the UK is leaving the EU; however, trade mark owners should welcome these changes since they will harmonise the way UK and EU trade marks are protected.

The changes will come into force immediately on 14 January 2019; there will be no transitional period. The UK Intellectual Property Office (UKIPO) has published practical guidance covering the changes. Some of the changes are very specific but the key practical changes for trade mark owners are summarized below. References to section numbers are to sections of the Trade Marks Act 1994 ("the Act").

Definition of a Trade Mark

Under Section 1(1) of the (soon to be) old version of the Act, a sign can only be registered as trade mark if it is "capable of being represented graphically" and is capable of distinguishing the goods or services of one undertaking from those of other undertakings. In effect this requirement that applicants provide a graphic (visual) representation of their mark limited the type of signs that could be registered as trade marks because non-traditional signs, such as smells, sounds and moving pictures, tend to be quite difficult to represent visually.

Under a new Section 1(1)(a) the requirement for graphical representation will be removed. Any form of representation will be accepted and a sign will be able to be registered as a trade mark provided that it can be represented in the register "in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor".

Key point: The removal of the requirement for graphic representation means the filing of trade marks in digital file formats (such as MP3, MP4 or JPEG files), should be allowed and will facilitate the registration as trade marks of sounds and moving pictures. However, applications will still need to enable others to understand exactly what the mark is. As such, the changes are unlikely to help the registration of smell marks, since the representation of these marks, graphical or otherwise, remains difficult.

While the above change will bring the UK into line with the position as it has been for EU trade marks since 1 October 2017, it should be noted that WIPO (the office in charge of International trade marks) still requires marks to be represented graphically and will not accept marks presented in electronic formats. Therefore, unless a UK trade mark was filed with a graphical representation, it will not be possible to use this UK trade mark as the basis of an International registration. In other words, while an applicant may be able to register a new UK trade mark with the filing of a .jpg file; it will not be able to then register this new mark as an International mark.

New defence in infringement proceedings

Currently, a defendant facing an opposition (or an invalidity action) based on a trade mark registration that may be vulnerable to a non-use cancelation action (on the basis that this mark has not been used for a continuous period of five years for the goods/services covered) can request as a defence that the other side demonstrates genuine use of his mark. However, that defence is not available in infringement actions. In such instance, the defendant must issue parallel invalidity proceedings against the claimant’s trade mark registration (or counterclaim for invalidity) to prevail.

Under a new Section 11A the proprietor of a trade mark registration will not be able to seek to prevent use of a sign if that registration is liable to revocation for non-use. The defendant will be entitled to request that the proprietor proves use of his mark (if the mark has been registered for more than five years when the action was brought) and if genuine use cannot be proven (or proper reasons for non-use shown) the action will fail.

Key point: This change is welcomed; it will stop trade mark owners from relying on old unused rights in infringement cases and remove the need for use to be challenged by way of separate revocation action. For trade mark owners it means that, more than ever, it is advisable to regularly ascertain that their trade mark registrations are used for the relevant goods or services. If not, this may affect their ability to enforce their rights in these registrations.

Proof of use

Also worth mentioning is the new way the five-year period is to be calculated. Under the old version of the Act, should an opponent rely on a trade mark registration in support of his opposition, he might have had to prove genuine use of that earlier mark during the five-year period ending with the date of publication of the opposed mark.

This sometimes led to strategic actions on the part of an applicant. For instance, an applicant knowing that his application could be opposed on the basis of an earlier trade mark registration, could deliberately delay the publication of his mark so that at the date of publication the problematic earlier mark would have been on the register for more than five years and, if it was used to oppose the new mark, subject to the requirement that genuine use be proven.

Under the revised version of the Act, the five-year period will not be calculated from the date of publication of the opposed mark but from its filing date (or its priority date, if applicable).

Own-name defence

Currently, businesses may escape liability for trade mark infringement where the trade mark being asserted is for a word that matches their name, providing that their use of that name is in accordance with honest practices. This "own-name defence" will be removed in respect of companies; the new Section 11(2)(a) will specifically state that the defence only applies to use by individuals using their own name or address. Furthermore, the use of a sign as a trade or company name has been specifically included in the list of infringing acts (Section 10(4)(c)(a)).

Key point: It is crucial that appropriate searches are conducted before a new trading or company name is adopted, to ensure that use of this new trading/company name does not infringe prior trade mark rights.

Search reports

The UKIPO stopped examining new trade mark applications on the basis of relative grounds in October 2007 and does not object to a new application on the grounds that it conflicts with a prior mark. However, the UKIPO has continued to perform (very) limited searches and alerts new applicants of prior marks that might conflict with their applications.

These alerts used to include prior registrations which had expired less than a year earlier, on the basis that these marks could be restored. This will stop. Section 6(3), which included expired registered marks within the definition of "earlier marks" in the context of relative grounds for refusal, will be repealed. As a result, the UKIPO will no longer include expired marks in its search reports.

This may put new applicants at risk because they will not be notified that their new mark is identical (or confusingly similar) to an expired mark and could have their application opposed (and their use of the mark blocked) if the prior mark is restored. To protect applicants who started use of their mark in good faith, proprietors of expired but later restored marks will not be able to bring infringement actions in relation to the periods during which their marks were expired up to their restoration. However, the protection does not extend beyond that period.

Key point: Applicants should not rely on the UKIPO search report to determine whether their new mark (and use of this new mark) is at risk. It is prudent to conduct searches before a new mark is adopted (and filed) and ensure that these searches include expired marks.

Absolute grounds

The prohibition on marks consisting exclusively of shapes that perform a purely technical function, add value to the goods or result from the nature of the goods will be extended to cover any other characteristic that is intrinsic to the goods applied for. The UKIPO’s guidance gives the example of a repetitive high-pitched sound being considered an intrinsic part of a fire alarm and likely to be subject to an objection. According to the Guidance, these changes are likely to apply to only a very small proportion of marks, but if this kind of objection is raised against an application, it may be difficult to overcome.

Infringements

The rights of trade mark owners have been extended slightly. In the case of counterfeit goods using a valid trade mark passing through the UK, it will now be up to the person shipping the goods to prove that the trade mark owner has no right to stop them being marketed in the country of destination (previously the trade mark owner would have had to prove that the goods were to be put on sale in the UK). Trade mark owners may also be able to take action against a wider range of items used to prepare for counterfeiting (tags and security features or devices), where there is slightly more uncertainty about the intention behind the production of the packaging, and in relation to services, as well as goods.