With focus currently on Brexit, it is easy to miss that on 14 January 2019 changes will come into effect that impact owners of UK trade marks or those that wish to obtain a UK trade mark. The changes are based on the EU Trade Marks Directive 2018 that will require the Trade Marks Act 1994 (“the Act”) to implement changes to harmonise it with EU law (irrespective of Brexit).
So what are the changes and how does this affect you:
1. Representation of a trade mark
Currently, applicants are required to “graphically” represent a trade mark. This poses certain problems for non-standard trade marks such as sound marks or even smell marks. The change removes the requirement for “graphical” representation and replaces it with wording to capture wider forms of technology such as the use of MP3s or MP4s.
In theory, this should provide brand owners with opportunities to expand what they can protect and be creative in the way the trade mark is expressed.
However, the representation must still be clear and precise and if the UK mark is used as a basis for an international application using the “Madrid system” it will need to be graphically represented. This is likely to mean that all Madrid system filings will need to be based on a graphically represented UK trade mark. This should be taken into consideration when creating a filing strategy that includes international applications.
2. Absolute grounds for refusal
Currently a mark consisting exclusively of a shape can be refused if it results from the nature of the goods themselves, is necessary to obtain a technical result or the shape gives substantial value to the goods.
After 14 January 2019, the wording will be changed to read the “shape or another characteristic” which results from the nature of the goods, is necessary to obtain a technical function or give substantial value to the goods will be refused registration.
The inclusion of the additional wording will broaden the scope of what can be refused and existing shape marks may be the subject to cancellation proceedings on the basis of the change to the wording of the Act.
3. Reporting of earlier registered trade marks
The UKIPO currently conducts a search of earlier registered trade marks at time of filing. This includes marks that were filed but have since expired.
After 14 January 2019 the UKIPO will continue to notify applicants of earlier registered rights, but will omit those marks that have expired.
However, the expired marks should not be ignored, as in some cases such marks may be in the process of being restored and could potentially prove problematic to the application.
Due diligence is key, and an availability search is highly recommended before filing a trade mark application to check the state of the register to see if you are free to register your mark.
The period for calculating non-use is changing from the publication of the application to the filing date of the application.
If the mark has been registered for five years or more, it is crucial to ensure that the mark is still in use in the course of trade to ensure its validity. If a mark has not been used for a period of five years or more, it may be cancelled on the grounds of non-use or will fail to prevent an application from becoming registered if such use cannot be evidenced.
5. Collective marks
Ownership of who can own a collective mark will be broadened. The regulations governing the collective mark will need to include information relating to the conditions of use details of sanctions that will be imposed if the mark is imposed.
In addition, those that have a right to use the collective mark will also have a right to intervene on trade mark infringement cases but the benefit for doing so may be outweighed by costs for intervening.
6. Goods in transit
If there is a belief that fake or counterfeit goods are in passing through the UK, these can stopped by the customs authorities.
The burden will then fall to the entity transporting the goods through the UK to prove that no right exists to stop them being marketed in the country of destination. They may show, for example, that there exists no registered trade mark in that country.
Until this change in the law, it will be necessary for the complainant to prove that the goods would have been put on sale in the UK.
7. Preparing to Counterfeit
The provisions relating to infringement have been extended slightly. Thus those preparing packaging, labels and certain other materials to making counterfeits could be considered to be infringing earlier rights “where the risks exist that the packaging could be used in relation to goods and services”.
8. Company Name
The use of a trade or company name (or part of a trade or company name) is now specifically included within the list of infringing acts.
This means that when setting up a new business name, you should ensure that you are free to use the name in the event it is infringing a third party’s trade mark rights.
Under the changes to the Act, a trade mark owner can now take action against a licensee for failure to observe certain provisions in the licence agreement under the trade mark law rather than under contract law.
This gives trade mark owners a new avenue to enforce their rights in the mark.
Sanjay Raphael is a chartered trade mark attorney in our Intellectual Property team, if you would like more information on a trade mark changes or any other intellectual property matters please do get in touch by telephone 01392 210700 or email TradeMarks@stephens-scown.co.uk