Changes to the UK Trade Mark Act are coming on the 14 January 2019, to implement the 2015 Trade Marks Directive. The main aim of the changes is to modernise existing legislation, to streamline and harmonise registration procedure and to help in the fight against counterfeit goods.

Registrations / Portfolio Management

The definition of what a trade mark is has changed. Where previously trade marks had to be capable of graphic (visual) representation, now they can be represented in any manner which enables determination ‘of the clear and precise subject matter of the protection afforded’. This will facilitate a more flexible system that allows marks to be represented on the register in any appropriate form, using generally available technology.

This will have particular impact on the filing of ‘non-traditional’ trade marks, for example MP3 and MP4 files will now be accepted, meaning that sound or motion marks should be easier to file. Though it is important to bear in mind that such applications will still have to fulfil the qualifying criteria for a trade mark to be registered (for example, that they are an indication of origin).

It should also be noted that the list of signs that cannot be registered is expanding. Currently, there is an ‘absolute prohibition’ on the registration of signs which consist exclusively of shapes if the shape results from the nature of the goods, or is necessary to achieve a technical result, or gives substantial value to the goods. This prohibition now applies not only to the shape, but to any characteristic of marks – with potentially wide ranging consequences for other non-traditional marks, such as colours.

If a registered trade mark appears in a dictionary or an encyclopaedia (as a generic term), there is provision to force the publisher to clarify that it is a registered trade mark, if they do not do so, an application can be made to a court to force compliance.

Enforcement

Under the new legislation, use of a trade mark as a company name is now specifically listed as an infringing act, and companies can no longer rely on the fact that they are using their own name as a defence to trade mark infringement proceedings (whether in accordance with honest practices or not).

This applies regardless of when use of the company name started, so technically you could be using a name that is allowed currently, but on the 14 January 2019 you will become an infringer. It is important to review your company name to check there is no conflict, and it is more important than ever that business expanding into the UK conduct the necessary searches to ensure their company name will not infringe third party rights.

Continuing the battle against counterfeit goods, trade mark owners can now bring infringement proceedings in relation to preparatory acts, where there is a merely a risk that packaging labels, tags, security or authenticity features bearing a trade mark will be used in relation to infringing goods or services. This gives brand owners greater scope to enforce their rights.

Trade mark owners also have a right to prevent counterfeit goods entering the UK, even if they are not released for free circulation in the UK. Under the new law, it is not necessary to prove that the goods will be put on the market in the UK, it is for the person shipping the goods to show that the trade mark proprietor has no right to stop them being sold in the country of destination.
Comparative advertising is now specifically included as an infringing act, if it is contrary to the Business Protection from Misleading Marketing Regulations 2008.

Licencing

Under the new legislation, non-exclusive licensees can only bring action for infringement with the permission of the brand owner. Exclusive licensees may still bring action if the owner refuses to do so, or fails to for a period of two months. This cannot be excluded in the licence agreement.

Where a brand owner does bring infringement proceedings, all licensees who have suffered loss (whether exclusive or not) can now apply to intervene in court proceedings in order to be awarded a share in any damages. This cannot be excluded in the licence agreement.

Conclusion

Brand owners will generally welcome these changes. In particular, the removal of the requirement for a mark to be capable of graphic representation should enable broader brand protection. It will be interesting to see how the changes affect the use and registration of non-traditional marks, such as sound and motion marks.
The changes to the ‘company name’ defence are important and highlight the need for thorough clearance checks before setting up or expanding a business into the UK. This is, however, good news for trade mark owners who previously would have to accept that a competitor can use a similar name, if they are doing so in accordance with honest practices
The sale of counterfeit goods continues to be a major problem for brand owners, and the change to the rules on infringement will increase the arsenal of tools at their disposal to prevent sales.

For more information please contact Peter Byrd on +44 (0)20 7427 6754 , or at peter.byrd@crsblaw.com.