Reforms to UK trade mark laws take effect

Out-Law News | 14 Jan 2019 | 2:53 pm | 2 min. read

Businesses should note changes made to UK trade mark laws that came into effect on Monday, an expert has said.

The changes give businesses greater freedom over the type of signs they can register as trade marks, and will potentially make it easier for trade mark owners to stop counterfeit goods being transported via the UK.

The new rules, though, could make it tougher for "long time" trade mark owners to invalidate similar, later-registered trade marks, and also restrict the ability of businesses that licence the use of trade marks from others to pursue legal action against alleged infringers.

The law covering defences against trade mark infringement have also changed. Organisations and individuals may now be subject to infringement proceedings if they are using a company name which conflicts with someone else’s trade mark. There is still a defence if an individual is using their personal name.

Trade mark law expert Florian Traub of Pinsent Masons, the law firm behind Out-Law.com, said: "With all attention devoted on what is happening around Brexit this week, the implementation of the EU trade mark reforms in the UK may not seem high on the agenda. However, the changes provide important opportunities for brand owners to further expand their trade mark portfolios and enhance their protection, and are therefore worth noting."

The Trade Marks Regulations 2018 implement the EU's Trade Mark Directive of 2015. Although the new UK regulations were finalised last year, they did not take effect until 14 January 2019.

The UK government has published guidance to help businesses understand the reforms.

Previously, only marks that are capable of being represented graphically could be registered as UK trade marks. Now, signs will be able to be registered as a UK trade mark so long as 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".

Representations can be submitted in popular file formats, such as in .mp3, .mp4, and .jpg format, although the guidance sets out file size limits.

According to the guidance, the Intellectual Property Office (IPO) will no longer inform businesses registering trade marks if there was an expired trade mark which potentially conflicted with the new one.

"It is possible that you may be unaware of an earlier mark similar to yours, but which was ‘expired’ at the time you applied to register your mark," the guidance said. "You may therefore start to use your mark. If the owner of the earlier mark renews/restores it, he may then claim you are infringing his mark. Under certain circumstances, you have a defence against such a claim."

The guidance recommends that organisations carry out an online search to see whether a mark is likely to conflict with other recently expired marks prior to applying, as expired trade marks can be renewed or restored up to 12 months after the renewal date.

If the owner of a previously expired, but subsequently renewed or restored mark seeks to stop a new registrant using their mark, as long as they started to use it in good faith, the new users will not be liable for infringement during a fixed period.

New 'proof of use' requirements may also need to be met by trade mark rights holders that "seek to invalidate someone else’s registered trade mark because [they] own an earlier similar trade mark", according to the guidance.

If asked to prove the validity of their own mark, those rights holders could be required to show that they have made use of their mark during the five year period immediately before the date when they applied to invalidate their mark as well as "an earlier period too" where the mark has been on the trade mark register for a longer time.

The new rules relating to infringement concern infringements that take place on or after 14 January.