January 14, 2019

On 14 January 2019, the Trade Marks Regulations 2018 (S.I. 2018/825) (“Regulations“) come into force. The Regulations transpose the Trade Mark Directive (EU) 2015/2436 (“Directive“) into the national law of the UK. The Directive’s objective is to further harmonise the national trade mark laws of EU member states with each other, and with the EU trade mark system. Many of the changes contained in the Directive reflect the changes made to the law applicable to pan-European EU trade marks, which have now been codified by EUTM Regulation (EU) 2017/1001.

In February 2018, the UK Government sought comments on the UK Intellectual Property Office’s proposed implementation of the Directive, which included a draft statutory instrument. Wiggin submitted a comprehensive response to the consultation which you can read in full here, and was one of only two UK law firms to do so. The impact of Wiggin’s response can clearly be seen throughout the UK Government’s response to the consultation which can be read here, and the revisions which were made to the draft statutory instrument as a result.

The Directive will primarily be transposed into national law by way of amendment to the Trade Marks Act 1994 (TMA) and the Trade Marks Rules 2008 (Rules). We highlight some of the key changes to national law below. In the following summary, all references to sections are to sections of the TMA, and all references to rules are to those of the Rules.

Removal of the requirement for graphical representation: The definition of a “trade mark” set out in section 1(1) has been amended to remove the requirement that a sign must be capable of being represented graphically. This change is likely to improve the ability to register non-musical sound marks, and marks which combine sounds with other elements, in particular. Whilst this change also theoretically also makes it easier to register smell, touch and taste marks, in practice it may still be difficult for such marks to fulfil the requirement for the representation of the mark to be sufficiently “clear and precise”, as such marks tend to be inherently subjective and imprecise.

Addition of “other characteristic” to shape exclusions: The scope of the shape exclusions set out in section 3(2) has been expanded to provide that a sign shall not be registered as a trade mark if it consists exclusively of the shape or another characteristic: (i) which results from the nature of the goods themselves; (ii) of goods which is necessary to obtain a technical result; or (iii) which gives substantial value to the goods.

Absolute grounds for refusal of registration: Section 3 has been amended to introduce new absolute grounds of refusal of registration where a registration is prohibited by any law providing for the protection of: (i) designations of origin or geographical indications; (ii) traditional terms for wine or traditional specialities guaranteed; or (iii) plant variety rights.

Relative grounds for refusal of registration: Section 5 has been amended to introduce two new relative grounds of refusal of registration: (i) a trade mark shall not be registered if its use in the UK may be prevented by virtue of any provision providing for the protection of designations of origin or geographical indications; and (ii) a trade mark shall be refused where it has been filed in the name of an agent or representative without the proprietor’s consent, unless the agent or representation can justify its actions (a new prohibition on use of marks filed in the name of an agent or representative is introduced at section 10B, and section 60 which covered similar matters has been repealed).

Infringement: New section 10(3B) provides a new right to prohibit a third party from engaging in certain preparatory acts to infringement (such as affixing a sign which is identical or similar to a registered trade mark to the packaging, labels, tags, security or authenticity features or devices, or any other means) and also to prohibit dealings in packaging, labels, tags, security or authenticity features or device or any other means, in relation to goods and services where that use would constitute an infringement of the rights of the proprietor. In addition, the list of infringing acts in section 10(4) is expanded to introduce use of the sign as a trade or company name or part of a trade or company name, and use of a sign in comparative advertising in a manner that is contrary to the Business Protection from Misleading Marketing Regulations 2008.

Goods in transit: New Section 10A provides the right for a trade mark proprietor to detain goods which (i) bear the proprietor’s trade mark without authorisation, and (ii) are goods for which the trade mark is registered, which are brought into the UK from outside the customs territory of the EU (as defined by the Union Customs Code) and are destined for sale in a third country. However, this right will lapse if the importer is able to show that the trade mark proprietor would not be able to prevent the goods from being placed on the market in the country of final destination.

Defences to infringement: The defences to trade mark infringement set out in section 11 have been changed in three ways: (i) the ‘own name’ defence has been restricted to natural persons, whereas it formerly applied to companies; (ii) the scope of the defence of descriptive use has been widened to include “signs or indications” which are descriptive and “signs or indications which are not distinctive”; and (iii) the defence of referential use has been widened to include any use which is for the purpose of identifying or referring to goods or services as those of the proprietor of that mark.

Non-use as a defence to infringement: New section 11A introduces a defence of non-use to proceedings for trade mark infringement. This new provision will enable a defendant in infringement proceedings to put a claimant to proof of use of its trade mark, without having to bring a formal counterclaim for revocation. However, if the defence is successful, it will not result in the revocation of the mark and its removal from the register in the same way that a counterclaim would, and so it will enable invalid marks to remain on the register at the conclusion of an infringement action.

Reproduction of trade marks in dictionaries: Section 99A introduces into UK law a specific enforcement mechanism where a trade mark is reproduced in a dictionary, encyclopaedia or similar reference work, where the reproduction gives the impression that the mark is a generic name for the goods or services for which the trade mark is registered. Upon written request of the proprietor, the publisher of the relevant work must ensure that the reproduction of the trade mark is accompanied by an indication that it is a registered trade mark “without delay”. If the publisher fails to take such action, the court may order the publisher to amend the reproduction of the trade mark or destroy any copies in its possession, or grant such other order as the court considers to be appropriate, which could include an order for publication of the change.

Definition of an “earlier trade mark” for opposition purposes: The Regulations repeal section 6(3) which provided that expired trade marks would continue to be taken into account when determining the registrability of a later filed trade mark for a period of one year after expiry (because it is possible for mark to be renewed late or restored to the register in this period) unless there was no bona fide use in the two years prior to expiry. Accordingly, an applicant will no longer be notified of expired marks which conflict with their application in the first year post-expiry. In order to mitigate the risk that an applicant could start to use a mark which conflicts with an expired mark which is subsequently renewed late or restored to the register, the Regulations also amend Rule 37 to provide that marks may only be restored to the register where the proprietor can show that the failure to renew was unintentional. This is a higher hurdle than the previous test, which provides that a mark can be restored where it is “just to do so”.

Requirement for a statement of use in opposition proceedings: Rule 17(5)(d) has been amended to provide that the proprietor of an earlier trade mark must now provide a statement of use if the registration procedure for that mark was completed before the start of the five year period which ends on the filing date (or priority date, if applicable) of the opposed mark. The previous rule was that the five year period ended on the date of publication of the opposed mark.

Proof of use in invalidity proceedings: The Regulations amend section 47 to introduce the requirement for an applicant for invalidity on relative grounds to prove that it has used its mark not only in the five year period prior to the application for invalidity, but also, if applicable, in the five year period prior to the filing date (or priority date, if applicable) of the challenged mark.

Division of registered trade marks: The Regulations amend section 41 to introduce the ability to divide registered trade marks, in addition to the existing ability to divide applications. Rule 26 now provides a procedure for making such a request. Such requests will be refused where the mark in question is subject to proceedings for revocation or invalidation, where the request would introduce a division amongst the goods or services which are the subject of the proceedings.