New UK trade mark laws come into force today
Today marks the coming-into-force of the Trade Marks Regulation 2018 (implementing the new EU Trade Mark Directive (2015/2436)). This is pretty big news, and brings about some key changes to trade mark law in the UK.
Various changes have been made to the existing regime (and for the trade mark enthusiasts out there, the full text of the Trade Marks Regulation 2018 can be found here. Some of the most eye-catching additions are:
"Graphic representation": no longer a requirement
Until today, one of the basic requirements for a sign to be a registered trade mark was that it had to be capable of being "represented graphically" (i.e. visually). This requirement has now been changed. Instead, in order to be registered as a trade mark in the UK, a sign needs to be "represented in a manner which enables the registrar and other competent authorities and the public to determine and clear and precise subject matter of the protection afforded to the [trade mark owner]".
This change means that, if applying for trade mark registration in the UK, you will be able to use a larger range of electronic formats to present your mark. This opens the door, for instance, to sounds (i.e. MP3 files) and motion, multi-media and hologram marks (i.e. MP4 files) being registered as trade marks in the UK.
Defences to infringement proceedings
From today, the "own name" defence (which provides that a trade mark is not infringed by a person using their own name/address, provided that such use is in accordance with “honest practices”) will no longer be available to companies. In another (related) change, the list of infringing acts in section 10 of the Trade Marks Act has been updated specifically to include "the use of a sign as a trade or company name (or part of a trade or company name)". Companies who have been benefiting from these safe-harbour provisions may, therefore, find themselves in trouble with rights-holders in the near future.
In addition, non-use (i.e. where a trade mark owner has not been making genuine use of their trade mark in the five years before they started legal action) has now been made a specific defence to infringement proceedings.
New statutory rights for trade mark licensors
Owners who licence their trade marks have been given specific rights allowing them to bring legal proceedings against a licensee that is acting in breach of certain terms of the licence in relation to:
- Its duration
- The manner in which the trade mark is to be used
- The scope of the goods/services covered by the licence
- The territory in which the trade mark may be affixed
- The quality of the goods manufactured or of the services provided by the licence
Changes for licensees
Until today, both exclusive and non-exclusive licensees could commence legal proceedings for trade mark infringement where, after having called upon the trade mark owner to take action, the trade mark owner has failed to do so. This has now changed, and will now only apply to exclusive licensees.
Licensees have also been given a specific right to be able to intervene in trade mark infringement proceedings in situations where they have suffered loss as a result of that infringement.
For more information on this or on any other trade mark queries, please contact Felix Dodd, or you can give us a call on 0345 070 6000.