As of 14 January 2019, there have been important amendments to trade mark law in the UK. We have highlighted some of the key changes below.
What are the changes?
A sign no longer needs to be represented graphically to be registrable. Signs will be able to be registered provided they are capable of distinguishing goods or services of one business from others and can be represented “in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.
The prohibition on the registration of signs consisting exclusively of shapes (if the shape results from the nature of the goods or is necessary to achieve a technical result, or gives substantial value to the goods) now applies to any characteristic of marks.
Marks will not be registered if their use is prohibited by any enactment or provision protecting designations of origin (‘PDOs’), geographical indications (‘PGIs’), traditional terms for wine or plant variety rights.
Examination in the UK
The UK IPO will no longer inform trade mark owners of earlier conflicting trade marks that have expired. As expired marks can be restored up to a year after the expiry of the renewal period, it is worth considering searches before applying to register a mark. Furthermore, it is now easier to restore an expired registration if the failure to renew was unintentional.
Where a UK opposition is based upon a trade mark that was registered more than five years prior to the filing date of the opposed application (or its priority date), the Opponent may be put to proof of use. Previously, in the UK, the relevant date was the publication date of the opposed application. This applies to oppositions filed after 14 January 2019.
It is possible to have a publisher of a dictionary clarify that a word is a trade mark and not a generic term. If they fail to do so, you can apply to the court for action to be taken.
Goods in transit
Infringing/counterfeit goods that are being shipped through the UK (but not intended to be put in circulation in the UK) can be detained by Customs. The holder or importer of the goods now has the burden to prove that you have no right to stop the goods being put into circulation in the destination country. This applies after 14 January 2019.
The Courts will now consider invalidity issues during the course of infringement proceedings, doing away with the need bring separate actions.
Proof of use may be requested as a defence in infringement proceedings: the five-year period for demonstrating use must pre-date the application filing date.
The ‘own name’ defence will apply to personal names only and no longer company names.
Comparative advertising is now specifically included as an infringing act, if it is contrary to the EU Comparative Advertising Directive (2006/114/EC), as implemented in the UK by the Business Protection from Misleading Marketing Regulations 2008 (SI 2008/1276).
It is possible to bring an action under trade mark law against a licensee if they fail to observe certain provisions relating to duration, form of mark, scope of goods or services covered, territory, and quality of goods or services in a TM licence (as well as a breach of contract action).
Exclusive licensees can sue in their own name if the trade mark owner refuses or fails to take action within two months of being requested to do so.
All licensees can intervene in infringement actions brought by a trade mark owner to obtain compensation for loss.
Licence provisions can apply to a pending trade mark application.
Charlotte Wilding 14 February 2019