The UK Intellectual Property Office (UKIPO) has launched a consultation on changes to UK trade mark law in light of the amendments to trade mark law arising from the Trade Mark Directive 2015. The document includes a draft statutory instrument (SI) and discussion of some issues of particular interest. The UKIPO is seeking views from businesses, trade mark attorneys and other stakeholders on how these changes should be implemented. The consultation period will run for 8 weeks, until 16 April 2018.

Implementation

The execution of the Directive is required due to the UK’s obligations as a member of the EU. Until the UK formally leaves the EU, all of its obligations remain in force. In the meantime, these changes will make it easier and cheaper for businesses, as a result of fewer differences in procedure between national and EU trade mark systems.

Only necessary revisions to UK law will be made, meaning that there is no need to amend wording that already matches the principle of a provision if it is already adequately covered by the Trade Marks Act 1994 (TMA 1994) or any other UK law.

Key Issues

To review the full list of issues, please see the consultation document here. However, in summary, some of the main proposed changes and the questions they raise are:

• Removing the requirement for a trade mark to be represented graphically and adding the new requirement for a mark to be clearly and precisely defined – will this increase the demand for more unusual marks?
• Amendments to the definition of ‘competent authorities’ – should this only be the registrar or should it also include the appointed person and the courts?
• Amendments to the absolute grounds for refusal to include other legislation/ international agreements which protect geographical indications, traditional terms for wine, traditional specialties guaranteed and plant variety rights – should these be included?
• Removing expired trade marks from the definition of an ‘earlier trade mark’ – this could cause problems in the context of the restoration of an expired mark and so has prompted an amendment to the test from whether it is ‘just to do so’ to whether the failure to renew is ‘unintentional’ – should applicants/owners no longer be notified about expired marks?
• Industrial property – Article 5.4(b)(iv) includes a right of refusal based on other ‘industrial property’ rights – does this include rights other than design rights or registered designs?
• Repealing s.10(6) TMA 1994 which provided a ‘home grown’ exception in UK law to comparative advertising – in light of CJEU decisions which exclude lawful competitive advertising, does s.10(6) serve no apparent purpose and so should be removed?
• Goods in transit and the definition of ‘third countries’ – in the context of potentially fake or counterfeit goods being detained by customs authorities while in transit to ‘third countries’, it is considered that the term ‘third parties’ is unclear and should be defined as ‘outside the EU’ (rather than outside the EEA) – this is particularly confusing in light of Brexit, will the UK be considered a ‘third country’?
• New remedy for a trade mark to be assigned to the rightful owner, where it has been registered in the name of an agent or representative without the owner’s consent – what are the cost implications and consequences of this?
• Protection against publishers misidentifying a trade mark as a generic term in dictionaries or other similar publications – is a specific enforcement mechanism required or does this already fall within the court’s inherent remit?
• Restricting the scope of the ‘own name’ defence against infringement to individuals only – should companies be prevented from using this defence?
• Non-use as a defence in infringement proceedings – this prevents trade mark owners from using old unused rights in infringement cases and removes the need for use to be challenged by the defendant in separate proceedings – is this requirement of genuine use beneficial?
• Removal of the need for trade mark proprietors to be joined to licensee proceedings – as the 2015 Directive is silent on this, should sections of the TMA 1994 relating to this be repealed?
• Proprietors of collective trade marks – collective marks are owned by an organisation and are used to identify a level of quality or specific characteristic. The 2015 Directive provides that these may be owned by “legal persons governed by public law”. Due to its lack of relevance in the UK, this term cannot be meaningfully transposed into UK trade mark law – what term would be sufficiently broad to cover all organisations which may require a collective mark?

Next Steps

Once the consultation period is over, the Government will consider the comments received and issue a response document in due course. It is not clear when the SI (amended as appropriate) is likely to be laid in Parliament, especially in view of expected pressures on Parliamentary time as the UK nears its exit from the EU. The intention is that the required changes to the law will come into effect on time, meeting the deadline of 14 January 2019.

Closing comments

The issues above address both big questions and detailed technicalities. In light of Brexit and the uncertainty surrounding the future relationship between the UK and EU, making legislative changes to bring UK law in line with EU law highlights how intertwined our legal systems are and the importance of maintaining a seamless framework across Europe which is accessible and effective for businesses in order to support innovation and economic growth.

Amelia Skelding 1 March 2018