New changes to Trade Marks in the UK
Charlotte Burroughs, Solicitor within the Commercial & Technology Department, considers the coming changes on Trade Marks by the Trade Mark Regulations 2018 which will come into effect on 14 January 2019.
Changes to trade mark rules are in the pipeline. The UK plans to implement the Trade Marks Directive 2015 (Directive) by the Trade Mark Regulations 2018 which will come into force on 14 January 2019.
The Directive is intended to update and further harmonise trade mark law across the EU and the current expectation is that the changes will apply notwithstanding the UK’s departure from the EU.
What will be the most significant changes?
1) Sounds, colours and smells will be capable of registration using new technologies. The IPO says that it will allow the trade marks applicants to use make applications using “the widest range of digital file format that is technically possible with our current systems”.
2) Customs will be able to detail potentially counterfeited goods which are in transit in the UK without trade marks owners having to demonstrate a potential breach of their rights in the UK. However the detail of this will need to be reviewed depending on what customs arrangements are agreed as part of the UK’s new trading arrangements with the EU after Brexit.
3) There will be a new defence of ‘non-use’ to infringement proceedings. At the moment the defendant to an infringement claim must start separate non-use proceedings or making a counterclaim for invalidity.
4) An expired trade mark (i.e. one which has been registered but were not renewed) will no longer constitute an “earlier mark” meaning the owner of such marks won’t be highlighted to the applicant for a new trade mark. The IPO has expressed concern about this – because an applicant could start to use its trade mark in good faith only to discover that its use is later challenged by the proprietor of a trade mark which had expired but which is subsequently restored.
5) The Directive includes an optional provision to permit the use of a trade mark between the filing and registration dates to be taken into account when deciding whether it has acquired distinctive character. However the UK has decided not to implement this.
The changes are a reminder that trade mark applications are the subject of numerous detailed rules. If you have any questions about the new rules or about trade mark applications in general, please contact Charlotte Burroughs.