The Mark Regulations 2018 (SI 2018/825) which come into force on 14 January 2019 make some important changes to UK trade mark law. These Regulations implement the EU’s Trade Mark Directive 2015/2436 which aims to further harmonise trade mark law across the EU.
Some of the key changes are the following:
- There will no longer be a requirement for a trade mark to be represented graphically when filing an application to register a trade mark. The new test is that marks should be represented on the register so as to allow parties to determine the clear and precise subject matter of the protection. This may enable more types of non-traditional marks to be registered such as holograms and motion trade marks. The UK IPO will allow applications to be filed in a wide range of digital formats (eg mp3 and mp4 format files).
- Additional grounds for refusal of a trade mark application are added. Registration will not be permitted for marks of the following types: designations of origin or geographical indications, traditional terms for wine or traditional specialities and plant varieties.
- The Intellectual Property Office currently notifies trade mark applicants of earlier conflicting marks. After the implementation, it will no longer notify applicants of trade marks that have expired in the last year and which may be a problem for use and/or registration in the event of a late renewal or restoration application being filed. It will, therefore, be important for searches of expired marks to be undertaken prior to applications being filed.
- With regard to the restoration of a lapsed trade mark, a proprietor will now only need to show that their failure to renew was unintentional. The requirement that the UK IPO should be satisfied that it is just to do so is removed. However, where a mark is restored and a third party has, in good faith, commenced using the identical or a similar mark in the period between expiration and publication of restoration of the registered trade mark the third party will have a defence to infringement.
- In trade mark infringement proceedings, a defence to an infringement action based on non-use has been added so that a proprietor of a registered trade mark is only entitled to prevent use of a later mark if the registered mark is not liable to be revoked for non-use at the date the infringement action is brought. Previously, someone facing proceedings for trade mark infringement based on a registration vulnerable to cancellation for non-use would need to counterclaim for revocation.
- The owner of a registered trade mark can prevent a third party bringing goods into the UK, where these are in transit and not for free circulation in the UK, they have arrived from a customs territory outside the EU and they bear a sign identical with the registered trade mark or such that it cannot be distinguished in its essential aspects from the registered trade mark. The onus will now fall on the importer or owner of the goods to prove that the owner of the registered trade mark has no right to stop them being marketed in the country of destination. Prior to this change the onus has been on the owner of the registered trade mark to prove that the infringing goods are going to be offered for sale in the UK.
- Companies lose the ability to rely on the ‘own name’ defence which is where they can avoid liability for infringement where the registered mark matches their name (as long as the name is in accordance with honest practices). The own name defence remains for natural persons.
- Trade mark owners will now be able to bring a court action where an entry of a trade mark in a dictionary, encyclopaedia or a similar reference work gives the impression that it constitutes the generic name of the goods or services for which it is registered and the publisher fails to take steps to indicate that it is a registered trade mark.