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A new Trade Marks Directive (2015/2436) (the Directive) was implemented in UK law with effect from, 14 January 2019.

One of the main changes made by the Directive was to abolish the rule that a trade mark need be represented graphically. What this means in practice is that marks such as holograms, animations, sounds, and multimedia content may now be protected by filing applications in digital formats such as MP3 and MP4. The new rules only apply to UK and EU applications. Applications filed through the International Madrid system still need to be graphically represented.

The Directive is intended to update and further harmonise existing trade mark laws. The changes intend to build on a well-established framework regulating the protection of trade marks and help make it more consistent, user friendly and technologically up to date for business. Other changes include:

Searching

When examining your trade mark application, the IPO will continue to notify you about earlier trade marks which potentially conflict with yours. However, it will no longer notify you about trade marks which were registered and have since expired. Applicants should therefore continue to search against marks which expired less than a year prior to the application as it is possible that these could be restored to the register.

Opposition

Once your mark has been accepted by the IPO, and before it is registered, it is published, to give other people the opportunity to raise objections. Third parties may oppose your trade mark application in the opposition period if they think your mark is too similar to a mark they own, and the opponents mark predates yours. However, if the opponent’s mark has been registered, for more than five years but they haven’t been using it, then their opposition will not be successful. It is the definition of this five-year period which has changed. The five year period shall be calculated from the date when the mark can no longer be opposed or, in the event that an opposition has been lodged, from the date when a decision terminating the opposition proceedings became final or the opposition was withdrawn, as opposed to the date of publication of the application.

All businesses should consider this when thinking about the evidential burden of challenging an opposition. This change only affects oppositions filed from 14 January 2019.

Collective marks

Collective trade marks are generally owned by trade associations and are used by their members to indicate that they belong to that organisation. Now a wider range of organisations will be able to apply for registrations of collective marks and authorised users of collective marks will only be able to sue for infringement if they have the trade mark owner’s permission to do so.

“Goods in transit” / guarding against counterfeit

The provisions relating to infringement have been extended slightly, and provide greater scope for taking enforcement action. If you believe that fake or counterfeit goods using your trade mark are passing through the UK to countries outside the customs territory of the EU, you can request that the customs authorities detain them. The burden of proof is now on the shipper and not the trade mark owner; making the seizure of goods passing through the UK easier. Until this change in the law, it would have been necessary for you to prove that the goods would have been put on sale in the UK.

There is now greater scope for trade mark owners to bring civil actions against traders involved in the chain of production including those preparing to engage in counterfeit goods. Preparatory acts including affixing an identical or similar sign to packaging, labels, security or authenticity features or devices, and offering or placing on the market or stocking, importing or exporting these items.

Company names

It will now be a specific act of infringement to use a registered mark in a company name. The ‘defence’ against infringement now only applies if you are using your own personal name (own name defence). It no longer applies if you are using your company’s name.

Licensing

Licensees have been given an important new express right to seek compensation where an infringement has affected them and the ability to intervene in proceedings to obtain this compensation.

Trade marks shown as generic terms in dictionaries

Trade mark owners will be able to request that publishers correct dictionaries (and other reference works) which wrongly identify a trade mark as a generic term. If they do not do so promptly or, in the case of printed copies, do not do so in the next edition, you can apply to the court for action to be taken. The court might order the publisher to correct the entry, amend the way the trade mark is reproduced, or to destroy copies of the publication. The court also has a discretion to order other remedies.

Infringement claims may be brought without the need for an invalidity claim

You no longer have to take separate invalidation proceedings before/alongside infringement action against another mark which was applied for and registered after yours. The courts can now consider invalidation-related issues during the course of infringement proceedings.

Division, renewal and registration

It will be possible to divide registrations into two or more separate applications or registrations (previously, only applications could be divided.).

Currently, the UKIPO sends renewal reminders about four months before renewal becomes due, this has now increased to six months.

The test for deciding whether to restore a lapsed mark has changed. An applicant will now be required to demonstrate that the failure to renew was unintentional.

Comparative advertising

The Directive prohibits use of a sign in comparative advertising if it is contrary to the Misleading and Comparative Advertising Directive 2006/114/EC.

If you wish to discuss this topic further or have any other questions, please contact Nick Philips, Lauren Tillott, or any member of the Edwin Coe Intellectual Property team.

Edwin Coe LLP is a Limited Liability Partnership, registered in England & Wales (No.OC326366). The Firm is authorised and regulated by the Solicitors Regulation Authority. A list of members of the LLP is available for inspection at our registered office address: 2 Stone Buildings, Lincoln’s Inn, London, WC2A 3TH. “Partner” denotes a member of the LLP or an employee or consultant with the equivalent standing.

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