Out-Law / Your Daily Need-To-Know

New UK trade mark laws have been finalised, although they will not take effect until early next year.

The Trade Marks Regulations 2018 implement the EU's Trade Mark Directive of 2015. Although the new regulations were laid before the UK parliament on 10 July, they will not come into force until 14 January 2019.

One of the biggest changes is to the type of sign that can be registered as a UK trade mark.

At the moment only marks that are capable of being represented graphically can be registered as UK trade marks, although other types of marks have been able to be registered as EU trade marks since 1 October 2017.

Under the new regime, 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".

They must also be capable of "distinguishing goods or services of one undertaking from those of other undertakings".

Words, including personal names, designs, letters, numerals, colours, sounds or the shape of goods or their packaging will all therefore be able to be registered as trade marks under the new regulations.

In setting out its plans for the reforms earlier this summer, the UK Intellectual Property Office (IPO) confirmed that, initially, representations will be able to be submitted in the same file formats that the European Union Intellectual Property Office (EUIPO) already accepts for EU trade marks, which includes .mp3, .mp4, and .jpg files. However, it said it plans to "enable applications to be submitted using the widest range of digital file formats that is technically possible with our current systems" in future.

However, the new regulations will also see businesses lose the ability to rely on the 'own name' defence to defeat claims that they have infringed UK trade mark rights.

Currently, businesses can escape liability for trade mark infringement where the trade mark being asserted is for a word that matches their name, providing their use of the name is in accordance with honest practices. The 'own name' defence will continue to be available to individuals.

Trade mark law expert Florian Traub of Pinsent Masons, the law firm behind Out-Law.com, said: "Brand owners will welcome the enhanced flexibility for registering non-traditional marks under the reform which will make the representation of marks such as sounds, holograms, and possibly smells more accessible. It is also positive to see that the UK will fully implement the EU Trade Marks Directive notwithstanding the UK leaving the EU in March 2019. This will ensure continuity and harmonisation in times when the uncertainties around Brexit remain a major concern to brand owners."

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