UKIPO offers Response to EU Trade Mark Directive 2015
The UK IPO has published its Response to the Consultation on the Implementation of the EU Trade Mark Directive 2015, which is required to be implemented into UK law by 14 January 2019.
The new Trade Mark Directive aims to update and further harmonise existing trade mark law applying to the national trade mark systems so that the conditions for obtaining and holding a trade mark are in the main, identical in EU Member States.
In the UK that will mean changes to the UK Trade Marks Act 1994 (TMA) and related secondary legislation, including the Trade Marks Rules 2008 (TMR). Many of the articles of the Directive have already been implemented into UK law so the TMA doesn’t need a massive overhaul to be fully compliant.
The remaining changes cannot be ignored. They will be implemented into UK law by 14 January 2019, which falls before the date on which the UK will officially leave the EU (11am on Friday, 29 March 2019 – B-Day).
The changes are unsurprising to many IP practitioners as they bring into force developments which have been in the trademark pipeline for several years. What is new however, is the exact wording of the UK legislation, which is going to be covered under the brand new Trade Marks Regulations 2018.
The changes which will most impact on businesses are set out below, with a brief explanation of what they will mean in practice.
Removal of the need for ‘graphical representation’
Most importantly, the definition of a trademark under s.1 TMA will be changed from ‘any sign capable of being represented graphically’, to the much longer ‘sign capable of being 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 the proprietor’. In practice this means that trademarks will no longer need to have the visual quality that they have previously required.
This will allow the presentation of trade marks in an electronic format such as an MP3 for sound based marks. It will also enable the filing of sound or moving image file formats and new multi-media trade marks that combine both moving images and sounds.
The UKIPO has said that it will publish further guidance on the filing requirements for the new mark types and acceptable file formats in the coming months.
Goods in Transit
Article 10(4) of the EU Trade Mark Directive enables customs authorities to detain potentially fake or counterfeit goods that are ‘in transit’ from a country outside the EU customs territory (i.e.where the goods are passing through the UK without being released for free circulation there – en route to a third country).
There will be a new s.10A of the TMA 1994 providing the right to prevent goods entering the UK without being released for free circulation. This is a notable change in the area of enforcement and trademark protection. Previously a trade mark proprietor was unable to take steps to prevent infringing parties from using the UK’s transport network as means by which to transport infringing goods beyond the EU’s custom’s territory.
This will apply to infringing articles which bear without authorisation a sign which is identical with the trade mark or cannot be distinguished in its essential aspects from the trade mark. Though this is an additional preventative measure that a UK trade mark holder can take, the UKIPO noted that potential further changes may be required should the UK leave the EU’s Customs Union.
Article 17 of the Trade Mark Directive introduces the principle that a trade mark proprietor cannot prevent use of a sign during infringement proceedings if his mark is liable to be revoked for non-use.
This provides a defence against infringement – the proprietor of the trade mark maybe required to prove he has been using it, and if he cannot do so, the infringement proceedings will not succeed. This will be useful in the event of over one million UK national marks being created from existing EUTMs when the UK leaves the EU. A new s.11A will be inserted into the TMA.
The primary benefit here will be the streamlining of infringement proceedings with opposition proceedings and the potential to cut down on the number of proceedings in respect of trade marks left vulnerable by non-use.
These are only a few of the changes that will come into effect with the 2018 Trade Marks Regulations. Other amendments include the narrowing of the ‘own-name’ defence to exclude businesses. This will be vital for any business which has a registered mark protecting their business name. The ‘own name’ defence has been widely used in the past by businesses but this has now been limited only to ‘natural persons’.
Undoubtedly the biggest change is in the definition of a trade mark under s.1 of the TMA. This removal of the need for a mark to be graphically represented paves the way for new forms of mark such as smells, sounds and moving images. It will be interesting to see if this results in a new wave of UK-registered non-traditional marks, especially given the increased demand for UK trade marks in the run up to Brexit.
UKIPO Response to Implementation of the EU Trade Mark Directive 2015 was written by Gemma Wilson